Trade Mark Infringement (S 38 of Trade Marks Act 1976):
Trade Mark infringement is violation of exclusive rights owned by a trade mark owner.
What constitutesTradeMark Infringement?
- When a person copies, uses similar brands through logo, words, patterns
- Passing off is a common law tort which is applicable in Malaysia as a form of Intellectual Property right against unauthorized use of a trademark which similar to a registered/ unregistered trademark.
- No one has the right to represent his goods as goods of another.
- A trade mark owner can take a legal action against a person who sells his goods as the goods of another.
The action for passing off can be classified into:
- Classic form, a trader representing his own goods as the goods of somebody else
- Extended form, which protects the goodwill in a name used by a trade or jointly by a trader or jointly by a group of traders.
Elements of passing off:
- Case law: Reckitt & Cloman v Borden  RPC 341 (HL)
- Lord Oliver: “The law of passing off can be summarized in one short general proposition- no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the claimant in such an action has to prove in order to succeed.
- First, Plaintiff must establish goodwill or reputation attached to the goods or sevices which he supplies in the mind of the purchasing public by association with the identifying “get up”. Such that“get-up” is recognized by the public as distinctive specifically of the plaintiff’s good and services.
- Second, Plaintiff must demonstrate a misrepresentation by the defendant to public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are the goods or services by the Plaintiff.