Sharing Third-Party Videos on Social Media Doesn't Constitute Use in Course of Trade Under Section 54 TMA 2019: Kuala Lumpur High Court

Introduction

The High Court of Kuala Lumpur has dismissed a trademark infringement claim brought by the plaintiff, the registered proprietor of the "Maxoil" mark, against a defendant in the lubricant oil business. The court, presided over by Adlin Abdul Majid J, ruled that the defendant's sharing of third-party videos on Facebook featuring a similar "Maxxoil" mark did not amount to use in the course of trade under section 54(2)(b) of the Trademarks Act 2019 (TMA 2019). This decision underscores the boundaries of trademark liability in digital advertising, particularly on social media platforms, and clarifies when online sharing crosses into infringing activity.

Case Background

The plaintiff, registered owner of the "Maxoil" trademark (Class 4) since 21 July 2008 for automobile, motorcycle, and heavy equipment lubricants, alleged infringement by the defendant, who also sells lubricant oils. The dispute arose in 2020 when the defendant shared four videos on its official Facebook page on 28 August, 31 August, 15 October, and 21 October, which displayed the "Maxxoil" mark alongside products. These videos were removed only after the plaintiff served the writ in January 2021.

The plaintiff claimed the "Maxxoil" mark was visually and phonetically similar to "Maxoil," leading to public confusion in the same trade channels, such as motorcycle workshops and vehicle shops. The core legal questions were: whether the similarity between the marks infringed under TMA 2019, if sharing the videos constituted use "in the course of trade," and if it resulted in a likelihood of confusion. The case built on a prior 2019 High Court and Court of Appeal ruling (Suit IP 46) that declared "Maxxoil" confusingly similar to "Maxoil" and ordered its expungement from the trademark register.

Arguments Presented

The plaintiff's case centered on section 54(2)(b) TMA 2019, alleging the defendant used the "Maxxoil" mark in trade without consent, causing confusion. Specifically, the plaintiff argued that the videos, posted on the defendant's Facebook page, promoted products resembling "Maxoil" goods, exploiting the plaintiff's goodwill. They claimed the defendant hid "Maxx Performance" branded products (which the defendant was authorized to sell) behind the "Maxxoil" facade, leading to deception in shared markets and distribution channels. The plaintiff sought damages and reliefs, emphasizing the marks' near-identical logos and the videos' role in advertising.

The defendant denied creating the videos, asserting they were merely shared from a third party because the endings promoted the defendant's legitimate "Maxx Performance" mark—a rebranded version of U.S.-origin "Maxxoil" products authorized for sale in Malaysia since June 2020. The defendant argued no infringement occurred, as it never sold "Maxxoil" products, only "Maxx Performance" ones, and even posted warnings on Facebook against counterfeit "Maxxoil" items, including lodging a police report to protect its interests. They contended the sharing did not qualify as use "in the course of trade" since it did not involve selling infringing goods.

Legal Analysis

The court analyzed the elements of infringement under section 54(2)(b) TMA 2019: similarity of signs, identical/similar goods/services, use in the course of trade without consent, and likelihood of confusion. Similarity was undisputed, relying on the prior Suit IP 46 judgment, where the High Court (upheld on appeal) found "Maxxoil" deceptively similar to "Maxoil." Both parties dealt in similar lubricant goods, satisfying the second element.

The pivotal issue was "use in the course of trade" under section 54(3) TMA 2019, which includes applying signs to goods, packaging, advertising, or import/export. The court found no evidence the defendant used "Maxxoil" in these ways; the videos merely showed the mark incidentally while promoting "Maxx Performance" products. Citing Mesuma Sports Sdn Bhd v Majlis Sukan Negara [2010], the court emphasized public perception: trade use implies indicating origin via manufacture, sale, or dealing in marked goods. Here, the defendant sold only "Maxx Performance" items, making "Maxxoil" promotion commercially illogical and unsupported by evidence.

On advertising under section 54(3)(h), precedents like 30 Maple SDN BHD v Siti Safiyyah binti Mohd Firdaus Chew and Behn Meyer Europe GmbH & Anor v Lee Chen Chao & Ors clarified that social media posts infringe only if promoting sale of infringing-marked goods. The videos advertised "Maxx Performance," not "Maxxoil," products. The defendant's warnings against "Maxxoil" counterfeits further negated intent. The court rejected an unpleaded passing-off claim, per Roadstar-Anseah Investments Pte Ltd v Thian Hock Electric Sdn Bhd , as essential elements like misrepresentation and goodwill damage were neither pleaded nor proven, especially absent sales of "Maxxoil" goods.

Key Observations

• On similarity: "With the finding and judgment in Suit IP 46, it is beyond dispute that the Maxxoil Mark is similar to the Plaintiff’s Mark."
• On course of trade: "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."
• Public perception from Mesuma Sports : "What amounts to ‘in the course of trade’... is not what can be argued to be its meaning in the strict sense... but what the ordinary perception of the concept in the course of trade is in the eyes of the public."
• On advertising: "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."
• Defendant's intent: "The act of the defendant in posting announcements... to warn the public against buying products with the Maxxoil Mark indicates that the defendant did not support products with the Maxxoil Mark."

Court's Decision

The High Court dismissed the plaintiff's claim with costs, ruling that the defendant did not use the "Maxxoil" mark in the course of trade, rendering issues of consent and confusion moot. No passing-off was established due to procedural and evidentiary failures. This decision limits trademark liability for incidental social media shares, requiring proof of direct commercial linkage to infringing goods. It may guide future cases on digital platforms, emphasizing that promoting authorized rebranded products via third-party content does not infringe, potentially reducing frivolous claims in e-commerce while protecting legitimate online marketing.