When a business idea or product is “stolen,” protection depends on the type of intellectual property involved. For branding elements such as names, logos, slogans, or packaging, the relevant protection is the trademark law under the Trade Marks Act 2019 (TMA 2019).
Trademark infringement occurs when a third party uses an identical or confusingly similar mark in the course of trade without consent, leading to a likelihood of confusion.
- Section 54 TMA 2019
Defines acts amounting to infringement of a registered trademark. - Section 56 TMA 2019
Governs civil proceedings and reliefs for trademark infringement.
Reliefs for Trademark Infringement under TMA 2019
Under the TMA 2019, a registered proprietor may seek the following civil remedies:
1. Injunction
An injunction is the primary and most important remedy.
- The court may grant an interim injunction (temporary) to immediately stop the infringing act before trial.
- A permanent injunction may be granted after full hearing.
Purpose:
To prevent further unauthorised use of the trademark and protect goodwill.
2. Damages
The proprietor may claim monetary compensation for losses suffered due to infringement.
- Includes loss of sales, damage to reputation, and dilution of brand value.
- The plaintiff must prove actual loss.
3. Account of Profits
As an alternative to damages, the plaintiff may claim the profits made by the infringer.
- Focus is on the defendant’s gain, not the plaintiff’s loss.
- Plaintiff must choose either damages OR account of profits, not both.
4. Delivery Up / Destruction of Infringing Goods
The court may order:
- Delivery up of infringing goods, labels, packaging, or materials; and/or
- Destruction or forfeiture of such items.
Purpose:
To remove infringing goods from circulation.
5. Statutory Damages (if applicable)
TMA 2019 allows for statutory damages in certain situations (especially where proving actual loss is difficult).
- This simplifies recovery without strict proof of damage.
6. Declaration
The court may issue a declaration that the trademark has been infringed.
- Often accompanies other remedies.
- Useful for establishing legal rights and future enforcement.
7. Costs
The successful party is generally entitled to legal costs.
Illustration:
The decision in The Polo/Lauren Company, L.P v RCB Marketing Sdn Bhd [2025] MLJU 4617 serves as a strong illustration of the scope of protection afforded to registered trademark proprietors under the Trade Marks Act 2019 (“TMA 2019”), particularly in relation to infringement and the reliefs available. The High Court found that the Defendant had infringed the Plaintiff’s registered “POLO” trademark pursuant to Section 54 of the TMA 2019. Firstly, under Section 54(1), the Defendant was held liable for using an identical sign (“POLO”) on identical goods in the course of trade without the Plaintiff’s consent. This constituted a clear case of direct infringement. Alternatively, the High Court found that liability was also established under Section 54(2)(b), where the Defendant had used similar signs on identical goods, giving rise to a likelihood of confusion among the public. Importantly, the High Court held that the Defendant failed to raise any bona fide triable issue, thereby justifying the grant of summary judgment in favour of the Plaintiff.
Pursuant to Section 56 of the TMA 2019, the High Court granted a comprehensive range of reliefs to the Plaintiff:
1. Injunction
The High Court granted a permanent injunction restraining the Defendant from:
- Using the “POLO” mark and other logo related to the brand in the course of trade, including through sale, advertisement, and online platforms (such as the Defendant’s website); and
- Enabling or authorising third parties to commit similar infringing acts.
This reflects the High Court’s firm stance in preventing further misuse of registered trademarks.
2. Delivery Up
The Defendant was ordered to deliver up all infringing goods and related materials within seven (7) days, including:
- Goods bearing the infringing marks; and
- Packaging, labels, and printed materials connected to such goods.
Additionally, the Defendant was required to file an affidavit verifying compliance, ensuring accountability.
3. Disclosure Orders
The High Court further ordered the Defendant to disclose detailed information relating to the infringing activities, including:
- Identities and addresses of suppliers and customers;
- Quantities and dates of supply or transactions.
Such disclosure is crucial in tracing the extent of infringement and identifying other parties involved in the distribution chain.
4. Damages or Account of Profits
The High Court ordered an inquiry as to damages, or at the Plaintiff’s election, an account of profits.
- This reflects the well-established principle that a plaintiff must elect between damages and account of profits, but cannot claim both.
- Where an account of profits is elected, the Defendant is required to prepare full financial accounts and supporting documentation.
5. Interest
The High Court awarded interest at the rate of 5% per annum from the date of judgment until full settlement of the sums due.
6. Costs
Costs of RM10,000.00 were awarded to the Plaintiff, subject to allocatur.
The decision in this case demonstrates the strong enforcement mechanisms available under Malaysian trademark law. Through the combined application of Sections 54 and 56 of the TMA 2019, the High Court ensured not only that infringement was halted but also that the Plaintiff was adequately compensated and protected against further harm.