Malaysia Airlines, Firefly and AirAsia: Unravelling The Complexities of Trademark Infringement 

By Subithara Ramasamy 

This article of riveting case in Malaysia has thrust an issue into the spotlight, offering a dramatic exploration of trademark law’s boundaries and the protection of well-known marks. At the centre of this high-stakes legal drama is Malaysia Airlines Sdn Bhd, a titan of the aviation industry and FlyFirefly Sdn Bhd (collectively referred to as the Plaintiffs), pitted against the dynamic and competitive AirAsia Com Travel Sdn Bhd (the Defendant). 

Background 

The parties involved in this suit are well-known names in Malaysia’s aviation industry, each operating under their respective brands and registered trademarks, “Malaysia Airlines”, “malaysia-airlines-logo - Airline Suppliers”, “Firefly” and “firefly”. The Defendant, however, is not the operator of the “AirAsia” airline but is an entity that operates the e-commerce platform known as the Airasia SuperApp (herein referred to as AA SuperApp). This platform offers a range of services, including flight booking, hotel booking, rides, food delivery, gifts, and various other lifestyle services and products. 

The dispute centres on allegations that the AA SuperApp displayed the Plaintiffs’ registered trademarks alongside their flight tickets without authorization. The flight inventory data was sourced either directly from the airlines or indirectly through aggregator channels. Simultaneously, AirAsia’s own trademarks appeared on every page of the AA SuperApp that users viewed. 

A significant aspect of the case is that, following the launch of the AA SuperApp, the Defendant contacted the Plaintiffs, seeking permission to ‘promote, market, and distribute’ the Plaintiffs’ airline tickets on the app. Despite receiving no response, the Defendant proceeded to list the Plaintiffs’ tickets on its platform. Upon discovering that, the Plaintiffs issued a cease-and-desist letter, demanding the Defendant halt the sales. However, the Defendant refused to comply and continued offering the Plaintiffs’ airline tickets on the AA SuperApp. 

Thus, leading to The Clash of Titans concerning trademark infringement, passing off, and unlawful interference with trade. The Plaintiffs further sought a declaration that their registered trademarks are well-known trademarks. 

The Core Legal Question: Use as a Trademark?  

The crux of the case revolves around the interpretation of the word “use” in Section 54 of the Trademarks Act 2019. According to this provision, trademark infringement occurs when a defendant uses a sign identical or similar to a registered trademark. However, the key question that needed to be determined is whether “use” must be understood as “use as a trademark” for infringement to be established. 

Under the previous legislation, “use as a trademark” was explicitly required as provided under Section 38 Trademarks Act 1976 (repealed Act). However, Parliament deliberately removed this phrase in the current Trademarks Act 2019, replacing it with a broader definition of “use”. Section 54(3) of the Trademarks Act 2019 outlines various instances where a person is considered to “use a sign” including: 

  1. applies it to goods or their packaging; 
  1. offers or exposes goods for sale under the sign; 
  1. puts goods on the market under the sign; 
  1. stocks goods under the sign for the purpose of offering or exposing them for sale or of putting them on the market; 
  1. offers or supplies services under the sign; 
  1. imports or exports goods under the sign; 
  1. uses the sign on an invoice, catalogue, business letter, business paper, price list or other commercial document, including any such document in any medium; or 
  1. uses the sign in advertising.  

The Defendant’s Defence: Not Used in a Trademark Sense 

The Defendant’s principal defence was that the display of the Plaintiffs’ trademarks on the AA SuperApp did not constitute a trademark infringement, as the Defendant’s use of the Plaintiffs’ trademarks was not “use in a trademark sense”. The Defendant argued that the display of the offending marks did not impact the essential function of the Plaintiffs’ registered trademarks. Additionally, the Defendant’s services were provided under and referenced by the AirAsia marks, which appeared on each page of the app. Thus, the Defendant contended that the display of the offending signs was not use of them as trademarks. 

High Court’s Examination and Ruling 

The High Court rejected the Defendant’s arguments, ruling that there is no requirement for “use” to mean “use as a trademark” for infringement under Section 54 of the Trademarks Act 2019. The Court emphasized that Parliament intended to broaden the definition of “use” and refused to follow precedents from UK, EU, and Singapore that required use as a trademark. Instead, the term “use” should be understood in its broader, general sense, rather than being strictly confined to the context of trademark use. This approach reflects a strict adherence to the statute’s language, respecting the legislature’s chosen words without imposing additional, unstated requirements. 

Consequently, the unauthorized display of the Plaintiffs’ registered trademarks on the AA SuperApp and the booking form was deemed infringement under limbs (e) and (h) as well as (g) of Section 54(3) of the Trademarks Act 2019.  

Passing Off, Unlawful Interference with Trade and Well-Known Trademark Protection 

The High Court was satisfied that the Plaintiffs had established all the elements of passing off namely, goodwill or reputation, misrepresentation and damage thus, succeeded in this action. Further, the Court agreed that the Defendant’s actions constituted unlawful interference with the Plaintiffs’ business. Additionally, the Court found that the Plaintiffs’ trademarks met the criteria for well-known status and declared the marks as well-known under Section 76 of the Trademarks Act 2019, granting injunctive relief based on substantial evidence and the Defendant’s acknowledgment of the marks’ value. 

The Implications: A Landmark Decision 

This landmark decision reshapes the boundaries of trademark protection in Malaysia. It broadens the interpretation of “use” in trademark infringement cases and redefines the extent of legal protections for well-known marks. This ruling sets a significant precedent for future trademark disputes, compelling businesses and legal practitioners to reassess their strategies in light of the evolving legal landscape. 

Latest Update:
This case is currently under appeal, and the decision is subject to further judicial consideration.

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