Registered trade mark infringement occurs if a party uses, in the course of business, a trade mark which is identical to or confusingly similar to that of another registered trade mark. The trade mark can be enforced against domain names, trade names, pseudonyms so long as such use results in confusion and deception.

How to assess a trade mark infringement?

The objective test set out in Re Pianotist Co Ltd [1906] will be applied, by:

• comparing the idea conveyed by the conflicting marks;

• considering the visual and phonetic effect of the goods/services to which the conflicting marks are to be applied; and

• considering the targeted market (ie: the type of customers of the conflicting marks) to determine the likelihood of confusion among purchasing public

When applying the above criteria, the standard is an objective one – “whether one trade mark is confusingly similar to another trade mark, when perceived by “an ordinary person with the appropriate literacy level“. This approach is recently approved and confirmed in the case of Merck Kgaa v. Leno Marketing (M) Sdn Bhd [2017].

Limitation Period:

The limitation period for an action to recover damages for registered trade mark infringement is six years from the last act of infringement.

Possible Defences to an alleged infringer:

• Use in good faith by a person of his or her own name.
• Use in good faith of a description of the character and quality of goods or services or which is not deemed as trade mark use.
• Prior use.
• Implied consent.
• Use of a trade mark in the exercise of rights conferred by registration.