Malaysia Court of Appeal confirms social-media reposting can constitute trademark use

A Malaysian Court of Appeal decision has clarified when reposting content containing another party’s trademark on a company’s social-media account can amount to trademark use “in the course of trade.”

In Maxcare Success Sdn Bhd v. Motionquest Sdn Bhd, the Court of Appeal held that reposting videos containing the MAXXOIL sign on Motionquest’s official Facebook page constituted use of the sign in the course of trade under Malaysia’s Trademarks Act 2019.

The decision is significant for businesses that routinely share promotional content supplied by manufacturers, distributors, licensors, or other third parties, particularly where the branding shown in the content differs from the branding used on products in the local market.

Dispute over MAXOIL and MAXXOIL

Maxcare Success was the registered proprietor of the MAXOIL trademark for lubricant products.

The dispute also involved the MAXXOIL sign. Earlier litigation had resulted in the registration of MAXXOIL being expunged from the Malaysian trademark register. Products manufactured in the United States under the MAXXOIL branding therefore could not be sold in Malaysia using that sign.

Motionquest was the Malaysian distributor of those products. Following the earlier litigation, the products were rebranded and sold in Malaysia under Motionquest’s MAXX PERFORMANCE trademark.

However, between August and October 2020, Motionquest reposted four videos containing the MAXXOIL sign on its official Facebook page. The videos were subsequently removed in January 2021 after Motionquest was served with the writ commencing the proceedings.

The High Court dismissed Maxcare’s trademark infringement claim, finding that the reposting did not constitute use of the MAXXOIL sign in the course of Motionquest’s trade because the sign had not been applied to products sold by the company.

The High Court also rejected the claim that the posts constituted infringing advertising, reasoning that the advertising would have had to relate to products bearing the MAXXOIL sign. Maxcare appealed.

Facebook page constituted a commercial platform

The Court of Appeal took a different view.

The court considered whether reposting the videos on Motionquest’s Facebook page amounted to “use in the course of trade” for the purposes of Section 54 of the Trademarks Act 2019.

Section 54(3) sets out circumstances in which a person is considered to “use” a sign, including using it on commercial documents and using it in advertising.

The Court of Appeal held that the definition was broad enough to encompass electronic media accessible on the Internet. It found that Motionquest’s Facebook page was a commercial platform because it existed to provide visibility to and promote the products sold by the company.

Accordingly, the reposting of the videos containing the MAXXOIL sign constituted use in the course of trade, even though the sign did not appear on the labeling or packaging of the products Motionquest actually sold in Malaysia.

The court also referred to the earlier Malaysian decision in 30 Maples v. Siti Saffiyah binti Mohd Firdaus Chew, which had considered social-media publications promoting products bearing an allegedly infringing mark and found such publications capable of constituting advertising.

The Court of Appeal concluded that the appearance of the MAXXOIL sign in the videos posted to Motionquest’s Facebook page was sufficient to establish infringement under Section 54(2)(b) of the Trademarks Act 2019.

Knowledge was also relevant

The court additionally considered Section 54(4) of the Act. That provision applies where a person uses a registered trademark on packaging, in advertising, or on certain commercial documents while knowing, or having reason to believe, that the use has not been authorized by the trademark proprietor or licensee.

The Court of Appeal found that the circumstances supported an inference that Motionquest had reason to believe that it was not authorized to use the MAXXOIL sign in Malaysia. The court noted that the products had been rebranded as MAXX PERFORMANCE precisely because of the earlier trademark dispute. Against that background, the court considered that Motionquest could not reasonably have been unaware of the restrictions surrounding use of the MAXXOIL sign in Malaysia.

The court therefore held that the deeming provision in Section 54(4) was also engaged.

Passing-off claim fails on pleading

The Court of Appeal reached a different conclusion regarding passing off.

The court agreed with the High Court that the tort of passing off had not been adequately pleaded in Maxcare’s statement of claim.

Under Order 18 Rule 7(1) of Malaysia’s Rules of Court 2012, pleadings must contain the material facts on which a party relies. The Court of Appeal noted that there was no express reference to passing off in the statement of claim and, importantly, no express reference to misrepresentation, which is a key element of the tort.

The issue had not been properly raised before trial and could not be introduced for the first time in after-trial submissions or on appeal.

The court also found no basis to disturb the trial judge’s factual conclusion that passing off had not been established, as the evidence showed that neither the MAXXOIL sign nor Maxcare’s MAXOIL mark had been applied to Motionquest’s products.

Permanent injunction granted

The Court of Appeal allowed Maxcare’s appeal in part, set aside the High Court’s order and granted a permanent injunction. It awarded costs of RM20,000 at both levels of the proceedings, subject to an allocatur.

However, the court declined to award damages or an account of profits. The evidence did not establish that Motionquest had applied the MAXOIL mark or the MAXXOIL sign to any products actually sold by the company.

Implications for brand owners

The decision provides a useful warning for businesses that treat social-media reposting as a relatively low-risk marketing activity. The Court of Appeal did not hold that every social-media repost containing another party’s trademark will constitute infringement. Its decision was based on the particular circumstances of the case, including Motionquest’s use of an official company Facebook page to promote its commercial activities and the history surrounding the MAXXOIL sign in Malaysia.

Nevertheless, the judgment makes clear that the fact that content was originally created by a third party does not necessarily prevent a company’s subsequent social-media use of that content from constituting trademark use.

For businesses, the decision highlights the importance of reviewing third-party promotional materials before reposting them through official social-media channels, particularly where different trademark rights or branding arrangements apply across jurisdictions. For trademark owners, meanwhile, the ruling offers another potential route for addressing unauthorized digital use of a mark, even where the disputed sign does not appear on the physical products being sold.

The case therefore adds an important Malaysian authority to the developing body of law examining how traditional concepts of trademark use and advertising apply to modern social-media marketing.

Case: Maxcare Success Sdn Bhd v. Motionquest Sdn Bhd, Civil Appeal No. W-02(IPCv)(W)-1149-07/2023, Court of Appeal of Malaysia, January 29, 2026.

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