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Malaysia – The Sale Of Goods Bearing A Trademark Over The Internet Is Recognized As Use Of The Trademark In Malaysia

In a recent decision the Malaysian High Court in the case of Abercombie & Fitch Co. & Anor V Fashion Factory Outlet KL Sdn Bhd & Ors [2008] 4 MLJ 127, held that sale of goods bearing a trademark over the Internet or via a website is recognized as use of the trademark.

In the said case, the 1st and 2nd Plaintiff’s were retailers of the popular American brand ABERCROMBIE & FITCH and ABERCROMBIE. The 2nd Plaintiff was a wholly owned subsidiary of the 1st Plaintiff and the Registered proprietor of the ABERCROMBIE & FITCH and ABERCROMBIE trademarks in Malaysia in respect of article’s of clothing, footwear, headgear all included in Class 25.

In addition to numerous stores throughout the United States 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 3 of the Defendant’s premises. The Plaintiff’s thereafter filed this action for a permanent injunction against the Defendants for trademark infringement and passing off on grounds that the Defendants blatantly infringed their marks.

As one of its defenses, 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 trademark infringement as the Defendant’s 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 then seven years and are to be regarded as valid and conclusive in all legal proceedings pursuant thereto.

Nevertheless, to clear any doubt on the matter, the Court went on to say that it was incorrect and misleading to say that the Plaintiffs have not used the registered trademarks in Malaysia. It held the three e-commerce websites being www.abercrombie.com, www.abercrombiekids.com and www.hollisterco.com were operated by the Plaintiff which sell their products to customers in various countries around the world including Malaysia constituted use of the trademark.

The Plaintiff’s products bearing its the marks were available for purchase over the Internet at the said websites. These websites were maintained and continue to be maintained by the Plaintiff’s and are accessible to all customers who have access to the Internet including customers/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 trademark over the Internet or via a website (as opposed to mere access to a website without additional steps to by the owner to bring the mark into use) is recognized as use of the trademark in Malaysia, which is an important development in trade mark law in Malaysia.


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