A recent decision by the Malaysian Court of Appeal has clarified a critical aspect of modern trademark law: reposting content containing a third party’s trademark on a corporate social media account can constitute trademark use "in the course of trade." This ruling establishes that global brands must balance digital agility with rigorous legal scrutiny to mitigate liability.
The case, Maxcare Success Sdn Bhd v. Motionquest Sdn Bhd, involves a dispute between two lubricant brands, MAXOIL and MAXXOIL. Maxcare Success held the registered trademark for MAXOIL in Malaysia. Motionquest acted as the distributor for products branded as MAXXOIL, originally manufactured in the United States. An earlier legal battle resulted in the expungement of the MAXXOIL registration in Malaysia, forcing distributors to rebrand these products locally under the name "MAXX PERFORMANCE."
Despite this restriction, between August and October 2020, Motionquest reposted four videos containing the MAXXOIL sign on its official Facebook page. These posts were removed in January 2021 after legal proceedings commenced. The central question before the Court of Appeal was whether such digital reposting amounted to a use of the mark in the course of trade, thereby infringing Maxcare’s rights.
Redefining "Use" in the Digital Marketplace
The High Court initially dismissed Maxcare’s claim, reasoning that because the MAXXOIL sign was not physically applied to products sold in Malaysia, it did not constitute use in trade. The lower court also rejected the argument that the posts constituted infringing advertising because they did not directly relate to products bearing that specific sign at the point of sale.
The Court of Appeal overturned this view, establishing that electronic media accessible on the internet falls squarely within the definition of advertising and commercial use under Malaysia’s Trademarks Act 2019. The court determined that Motionquest’s Facebook page was a commercial platform designed to promote visibility for its products. Therefore, by reposting videos featuring the contested sign, Motionquest engaged in "use in the course of trade," even if the physical goods it sold carried different branding.
This interpretation aligns with broader legal trends recognizing that brand perception is shaped not just by packaging, but by the entire digital ecosystem surrounding a product. For businesses relying on user-generated content or third-party promotional material, this decision indicates that simply curating existing content can create new liabilities if that content contains unauthorized intellectual property.
The Role of Knowledge in Infringement Liability
Beyond the mechanical definition of use, the court examined Motionquest’s state of mind under Section 54(4) of the Act. This provision deems a person to have used a mark without authorization if they knew, or had reason to believe, that such use was unauthorized.
The Court of Appeal found that the circumstances strongly suggested Motionquest had reason to believe its actions were infringing. The prior litigation and subsequent rebranding to "MAXX PERFORMANCE" created a clear record that MAXXOIL was not a permissible mark in the Malaysian market. In this context, reposting content with the original US branding could not be viewed as an innocent oversight. It demonstrated a conscious or reckless disregard for existing trademark restrictions.
This aspect of the ruling is particularly significant for multinational corporations managing regional brands. When product names and trademarks vary across jurisdictions due to local registrations, internal compliance protocols must be robust. Distributors cannot rely on global marketing assets without verifying their legality in every local market where they are disseminated.
The Limits of Legal Remedies
While Maxcare succeeded in establishing infringement, the appeal was partially granted. The Court of Appeal declined to award damages or an account of profits. This decision rested on the lack of evidence that Motionquest had actually applied the MAXOIL or MAXXOIL marks to physical products sold in Malaysia. Without proof of actual sales volume or consumer confusion resulting from tangible goods bearing the mark, calculating financial compensation remained speculative.
Furthermore, Maxcare’s claim for passing off was rejected. The court noted that the initial statement of claim failed to adequately plead the elements of misrepresentation required for a passing off tort. This procedural loss underscores the importance of precision in legal filings, even valid substantive claims can fail if not framed correctly within established pleading rules.
Strategic Implications for Brand Protection
This case offers two distinct lessons for different segments of the business world. For brand owners and intellectual property holders, the decision expands the toolkit for enforcement. Unauthorized digital use of a trademark is no longer confined to physical counterfeit goods. Trademark monitoring services must now include aggressive auditing of social media channels to detect infringing content that may influence consumer perception without appearing on product labels.
For companies utilizing third-party content or distributing products under license, the ruling emphasizes the need for comprehensive rights management. Reposting promotional material is not a passive activity, it is an active endorsement and promotion. Businesses must ensure that all distributed content complies with local intellectual property laws. Clear contractual provisions regarding brand usage in digital channels are essential to mitigate risk.
The intersection of trademark law and social media marketing continues to evolve. As brands increasingly rely on digital platforms for visibility, the legal definition of "use" will continue to adapt. Companies that fail to update their compliance strategies to reflect this reality risk facing injunctions and reputational damage. In the digital marketplace, every post is a billboard, and every repost is an endorsement. Understanding the legal weight of these actions is no longer optional - it is a fundamental component of business strategy.