By Ng Yin Rong
Can a business infringe a trademark without ever placing the offending mark on a single product it sells? The Malaysian Court of Appeal says yes. And all it may take is a repost.
Social media has become the modern shopfront. Businesses advertise, engage customers and build brands through Facebook, Instagram, TikTok and other platforms, often with a casualness that would be unthinkable for traditional advertising. But a click is still a commercial act when made in a commercial setting. The Court of Appeal’s decision in Maxcare Success Sdn Bhd v Motionquest Sdn Bhd (Civil Appeal No. W-02(IPCV)(W)-1149-07/2023, Court of Appeal, in grounds of judgment delivered by YA Dato’ Azizul Azmi bin Adnan) is a timely reminder that what businesses publish or republish online can carry consequences well beyond the screen.
Three Marks and Four Facebook Reposts
The appellant, Maxcare Success Sdn Bhd (the registered proprietor of “Maxoil” mark) previously succeeded in litigation that resulted in the highly similar “MAXXOIL” mark being expunged from the Malaysian trademarks register. Consequently, products manufactured in the United States under “MAXXOIL” could not be sold in Malaysia under that branding. Following this, the local distributor and the respondent, Motionquest Sdn Bhd rebranded those products under its “MAXX PERFORMANCE” mark. So far, so compliant.
The problem arose online. Between August and October 2020, Motionquest reposted four videos containing the “MAXXOIL” sign on its Facebook page. Those four reposts became the fault line of the dispute: could displaying “MAXXOIL” online amount to trademark infringement when the products actually sold in Malaysia carried a different mark?
The High Court said no. While most infringement elements were met, the online reposts did not constitute “use in the course of trade” because “MAXXOIL” had not been applied to products sold by Motionquest. The Court of Appeal disagreed.
From Marketing Tool to Trademark Liability
Here is the part that should worry every social media manager: intent did not matter, only visibility did.
The High Court had effectively linked infringing advertising to the sale of goods carrying the offending mark. Because Motionquest sold products under “MAXX PERFORMANCE” rather than “MAXXOIL”, that connection was absent.
The Court of Appeal saw it differently and its reasoning is where the real lesson lives.
Motionquest‘s Facebook page existed to give visibility to and promote its products. It therefore served a commercial purpose. The reposting of videos containing “MAXXOIL” consequently constituted “use” in the course of trade under section 54 of the Trademarks Act 2019, even though the offending sign never appeared on the labels or packaging of the products Motionquest actually sold.
Knowledge mattered here too, and that is easy to miss.
Motionquest knew that the products had to be repackaged as “MAXX PERFORMANCE” for the Malaysian market because earlier litigation had prevented their sale under “MAXXOIL”. Against that background, the Court found that Motionquest had reason to believe that use of “MAXXOIL” was unauthorised, bringing section 54(4)’s deeming provision into play.
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Infringement, But No Damages: The Twist
Maxcare ultimately succeeded on trademark infringement. The Court of Appeal granted a permanent injunction and RM20,000 in costs.
But there was a sting in the victory: no damages and no account of profits.
Why? Because the evidence did not establish that “Maxoil” or “MAXXOIL” had actually been applied to products sold by Motionquest. Winning the infringement claim did not win Maxcare a payout. Those are two different fights. Digital use was sufficient to establish infringement, but infringement did not automatically establish compensable commercial loss. Liability and monetary relief remain separate questions, each requiring its own evidential foundation.
Maxcare‘s second claim did not even get that far. Its Maxcare‘s passing off claim failed because it was inadequately pleaded. Passing off was not expressly identified in the statement of claim, nor was the essential element of misrepresentation properly pleaded. The lesson is procedural but unforgiving: courts decide the case pleaded, not the case a party later wishes it had pleaded.
Think Before You Repost
Maxcare should not be reduced to the simplistic proposition that every Facebook repost amounts to trademark infringement. The more important lesson is that the boundary between marketing and trademark use has become increasingly porous in the digital economy. When a social-media account exists to promote a business, content published through it may carry the same trademark consequences as more conventional commercial advertising.
For businesses, that calls for more than simply checking the marks printed on their products. Digital content deserves the same clearance discipline as packaging, brochures and advertising campaigns. Old posts, reposted videos, third-party promotional material and inherited marketing content should not escape scrutiny merely because nobody created them from scratch.
For trademark owners, meanwhile, the decision is significant because it confirms that enforcement need not stop at the physical product. The digital shopfront matters too.
The internet may have made sharing effortless. Trademark law has not necessarily made it consequence-free. A quick audit: when did you last check what’s actually still live on your company page? Before clicking “share”, businesses would do well to ask one deceptively simple question: whose mark am I sharing and do I have the right to use it?