TORT LAW – PASSING OFF – UNREGISTERED – TRADE MARK – INFRINGEMENT

I have been selling my brand named ‘Slimmy Slimmy’ on social media but I never do trade mark registration. One day, I received messages on social media asking me whether certain goods with the label ‘Slimmie Slimmie’ were mine. Upon conducting trade mark search, I discovered that the brand had been registered. What can I do?

You can sue them under the common law tort of passing off.
Under the law of Trademarks Act 2019 and the Trademarks Regulations 2019, legal actions against trade mark infringement is available only when a registered mark is infringed.
The registered proprietor of the mark has the right to initiate court proceedings against any person who has infringed or is infringing its mark.
HOWEVER, as for unregistered marks, the proprietor may sue the infringer for passing off its mark as that of the proprietor’s.

What should be proven by the proprietor?

In order for a proprietor who did not register its mark to establish passing off, the proprietor must be able to prove that there was goodwill or reputation attached to the goods or services; misrepresentation; and damages.
Furthermore, Malaysia practises the ‘First-to-Use’ principle, provided that these marks have attained goodwill and reputation in Malaysia.

What ‘First-to-Use’ principle is?

First use means the use of a trade mark prior to anyone else regardless of the extent of such use.
The ‘First-to-Use’ principle establishes that trade mark rights accrue to the first business to use the mark in association with the sale of goods or services on the market.
This principle acknowledges the right of the first user of a mark.
Other countries such as the United Kingdom recognises ‘First-to-File’ principle (the first person to register a brand obtains the rights).

Our Comments

Tort of passing off is more difficult to prove and can be expensive.
Thus, protection via registration would always be recommended in order to protect your intellectual property right.
Registration is the way to go but the Malaysian trade mark system does take into account of common law rights that accrue from use of an unregistered mark.

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