By Zainal Amshah
Can infringement of a registered trademark occur if consent was given for the use of the trademark by the registered owner? According to Section 40(1)(dd) of the Trade Marks Act 1976 (“TMA”), no infringement occurs if a trademark is used by someone in relation to goods or services whereby the registered proprietor or user has given express or implied consent.
In relation to Copyright infringement, Section 36(1) of the Copyright Act states that a copyright infringement occurs when a person “does, or causes another person to do, without the license of the owner of the copyright, an act the doing of which is copyrighted under this Act.”
In view of the existence of the many digital platforms that the public can make use of to share content online, the question here is whether consent is said to be given by the registered proprietor or user when a third party re-shares the Mark via embedded links.
In Bayland Sdn Bhd & Anor v Paulus De Kruijff, the High Court considered this very question.
Background
The 1st Plaintiff is involved in property development, while the 2nd Plaintiff provides property services. The project concerned in this case is Verve Suites Mont Kiara (VSMK) where the Plaintiffs various “VERVE” trademarks (“Marks”) had been registered in Malaysia. The Marks have been published on YouTube by the Plaintiffs. The Plaintiffs are also the copyright owners of several promotional materials (“Works”) including a promotional video of VSMK, photographs of the environment and the facilities available at VSMK, along with the site and floor plans of VSMK.
The Defendant had been appointed as a member of the VMSK Management Committee and later served as its secretary until 2019. From then onwards, the Defendant was working as a real estate negotiator and had his own website. In October 2019, the Plaintiffs were informed that the Defendant had been using content containing the Plaintiffs’ Marks and Works on the Defendant’s website.
It was the Defendant’s contention that implied consent had been given for the usage of the Marks as the Plaintiffs had published the Marks on YouTube.
Decision
With regard to the claim of infringement, there are several elements that the plaintiff must prove when making such claims, which are:
- The defendant used a mark that is either identical or similar to the registered trademark, and which has the potential to deceive or cause confusion.
- The defendant is not the registered proprietor or the authorised user of the trademark.
- The defendant used the offending trademark in the course of trade;
- The defendant used the offending trademark for goods or services that fall within the scope of registration; and
- The defendant used the offending trademark in such a manner that could lead people to believe it is being used as a trademark, or associated with the registered owner in business.
The court agreed that the Plaintiffs had established all the above elements in proving that the Defendant had infringed the Plaintiff’s Marks.
On the issue of consent, the court stated that the Defendant knew that the Promotional Video belonged to the plaintiff, that the Defendant is tech savvy and gave no second thoughts to using the Promotional Video for his own commercial interests, and that the Defendant was not innocently sharing the Promotional Video but using it to make sales. This led the court to decide that the Plaintiffs did not give consent and that the Defendant had not obtained either expressed or implied consent for the use of the Plaintiffs’ Marks and Works on the Defendant’s website. Therefore, there was infringement of copyright in the Promotional Video.
Key Takeaways
- Trademarks can be registered for names of buildings or building projects for sales and for services rendered in the management of property.
- All advertisement materials, promotional materials created, if they are original in nature and sufficient effort and skill were rendered in the creation, such materials are protected under the Copyright Act. In Malaysia, while it is not mandatory, it is advisable to register the copyright at the Intellectual Property Corporation of Malaysia (MYIPO).
- Embedding third party’s copyrighted material in your own media, such as your website and YouTube channel, is an infringement of copyright if done without consent from the copyright owner, no matter how innocent it was.
Want to know if what you’re doing constitutes copyright or trademark infringement? Think someone is infringing your rights? Drop us a line at kass@kass.asia!
- Legal Consequences of an Unregistered Franchisor in Malaysia: Hasjay Group Sdn Bhd & Anor v Eco Passions Sdn Bhd & Ors [2022] MLJU 433 - July 25, 2024
- Spotlight Changes of Vietnamese Trademark Laws - July 25, 2024
- Wait, is this Eng the Same as that Eng? – Confusingly Similar Trademarks - July 25, 2024
