Draft Seminar Paper

Name: Chiew Choon Man

Matric Number: LGA160055

Topic: Protecting trademarks on the internet, (including social media) and role
of internet service providers.

I. INTRODUCTION

Trademark is not a modern concept, it has existed long ago in human history. Ever
since human being knows about the concept of trade and has developed it way beyond
their localities, the concept of trademark can already be seen in some of their goods.
For instance, in 3000 years ago, there will be signatures of the Indian craftsmen on
their artistic products before it was put into market to trade in Iran; whereas in 2000
years ago the Chinese had already started to sell products with their marks on it in the
Mediterranean area.1

Trademark has become an important and valuable business asset for majority of the
company. The more popular or successful a business is, the more important the
trademark is. In some business, the value of trademarks can become a significant
portion in the total assets that the company have. For example, in the year 2018, the
Coca-Cola company’s total asset is USD 83.21 billion, out of which, 20% or about USD
17 billion are the value of the trademark and goodwill. 2

In this transition period to the age of Fourth Industrial Revolution, the growth of the
internet as an online marketplace has created not only many new opportunities for
companies to sell their goods or services, but also poses many new challenges to
companies seeking to protect their intellectual property rights and particularly their
trademarks.

A research was released by CompuMark, an analytics company on 30 January 2019

which has surveyed 352 trademark professionals from in-house and external legal
teams across the US, UK, Germany, France and Italy. According to the research
almost half of UK professionals surveyed said they had litigated trademark
infringement cases relating to social media names in 2018. This follow by the US, with
43% of those surveyed attributing trademark infringement to social media names and
1
World Intellectual Property Organization, Introduction To Trademark Law & Practice The Basic Concepts, 1993,
Geneva.
2
Coca-Cola 2018 Annual Report. Retrieved from http://d18rn0p25nwr6d.cloudfront.net/CIK-
0000021344/4705d271-8719-4b57-94e0-332e22765317.pdf
Germany with 38%, France with 32% and Italy with 14%. This shows that infringement
of trademark in internet and particularly social media has been a great challenge to
the protection of trademark.

II. GENERAL DEFINITION AND PROTECTION OF TRADEMARKS IN MALAYSIA

Definition

By reading together Section 3 (1) and 10 (1) of the Trade Marks Act 1976 3(“TMA”),
any distinctive device, brand, heading, label, ticket, name, signature, word, letter,
numeral or any combinations which used for the purpose of indicating a connection in
the course of trade between the goods or services and a person having the right can
be considered a trademarks in Malaysia.

In the latest trademarks proposed legislation, Trademarks Bill 2019 (“TMB”), any letter,
word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods
or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or
any combinations which can be represented graphically and is capable of
distinguishing goods or services of one undertaking from those of other undertakings
are trademarks in Malaysia.4

Based on the above definition, it shows that the main function of trademark for a trader
is that it establishes the connection or origin between the traders and their products.
The trademark is also important to distinguish between one trader’s product towards
all the product at large.

Protection of Trademarks

Trademarks can be protected by way of registration or through use. As long as

complying with the requirements under Section 10 of the TMA and not fall under
Section 14 and 15 (in certain case) of the TMA, a trademark can be registered via the
process set out in Part V of the TMA. Under TMB the application process is stipulated
in Chapter 2 of the TMB whereas the absolute and relative grounds for refusal of
registration can be found in Section 23 and 24 of the TMB.

Upon registration, the registered proprietor of the trademarks will be conferred with
powers such as to assign the trademarks and give good discharges for any
consideration for the assignment and obtain any equities in respect of a trade mark
may be enforced in like manner as in respect of any other personal property. 5Further,

3
Section 3 (1) and 10 (1) of the TMA
4
Section 2 (1) and 3 (1) of the TMB
5
Section 34 TMA
the registration of trademarks (if valid) will also give the right to the registered
proprietor the exclusive right to use the trademark in relation to his products subject to
any conditions, amendments, modifications or limitations entered in the Register.6

Whereas under the TMB, the registered trademark confers the following rights subject
to any disclaimers, conditions, amendments, modifications or limitations (if any) to the
registered proprietor of the trademark:7

a) exclusive rights to use the trademark and to authorize other persons to use
the trademark in relation to the goods or services which the trademark is
registered;
b) right to seek for relief for infringement of his trademark;

Registration of the trademarks also ease the enforcement of the trademark’s

protection since the burden of proof of the person registered with the trademark is
lower under the law that:

a) The law shall presume that the trademark is distinctive (otherwise it cannot
be registered under Section 10 (1) of TMA);
b) There shall also be a presumption that the person owned the registration is
the owner of the trademark for the products set out in the registration and
also its subsequent assignment or any other transmission thereof;8

This is also the same under Section 52 of the TMB where it states that in all legal
proceedings relating to a registered trademark:

(a) the Register shall be prima facie evidence of anything contained in the
Register;
(b) the registration of the prescribed particulars of any registrable transaction
under section 65 shall be prima facie evidence of the transaction; and
(c) the registration of a person as the registered proprietor of the trademark
shall be prima facie evidence of:

(i) the validity of the original registration of trademark; and

(ii) any subsequent assignments and transmissions.

Further, after the expiration of 7 years or (5 years under TMB) from the date thereof,
all legal proceedings in relation to a registered trade mark shall be taken to be valid in
all respects except in cases where the original registration was made by fraud, that

6
Section 35 TMA
7
Section 48 TMB
8
Section 36 TMA
the trademark contravene Section 14 or the trademark was not distinctive of the goods
or services of the registered proprietor at the commencement of the proceedings. 9

Infringement of a trademark

A registered trademark is infringed by a person who not being the registered proprietor
or user of the trademark and has uses a mark which is identical with to a trademark or
so nearly resembling that is likely to deceive or cause confusion that during trade in
such a manner as to render the use of the mark likely to be taken either

a) As being use as a trademark; and

b) In case in which either the use is use upon the goods or services in
advertisement issued to the public to draw a reference to a person having
the right as registered person to use the trademark or to goods with which
the person is connected in trade.10

Whereas under TMB infringement of trademark happens when a person uses a sign
which is identical with the trademark in relation to goods or services which are identical
with those for which it is registered, in the course of trade, without the consent of the
registered proprietor and resulting in the likelihood of confusion on the part of the public.
11 The TMB has went further to explain that the using a sign means:

(a) applies it to goods or their packaging;

(b) offers or exposes goods for sale under the sign;
(c) puts goods on the market under the sign;
(d) stocks goods under the sign for the purpose of offering or exposing them
for sale or of putting them on the market;
(e) offers or supplies services under the sign;
(f) imports or exports goods under the sign;
(g) 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
(h) uses the sign in advertising.

Further, the registered proprietor shall have the right to institute Court proceedings
against any person who has infringed or is infringing the registered trademark.12 TMB
also spells out the following remedy that the aggrieved person can seek from the Court:

(a) an injunction subject to such conditions as the Court thinks fit which
includes to prevent goods that involve the infringement from entering into
the channels of commerce;

9
Section 37 TMA
10
Section 38 (1) of TMA
11
Section 54 (1) & (2) of TMB
12
Section 56 (1) TMA.
 (b) damages;
(c) an account of profits;
(d) the award of such additional damages13;
(e) Order for erasure, etc., of offending sign14;
(f) Order for delivery up of infringing goods, material or articles15;
(g) Order for disposal of infringing goods, material or articles16.

In addition to the above, under Section 8 (1) of the Trade Description Act, a trade
description shall include an indication, whether direct or indirect, and by any means
given, in respect of any goods or parts of goods relating to any rights in respect of
trade mark registered under the TMA. And that any person who applies a false trade
description, supplies or in his possession, custody or control for supply to any goods
as if the goods were subject to any rights relating to registered trade mark, commits
an offence and shall be punishable by fine or imprisonment.17

In the case where a trademark is unregistered, a person can still enforce his right of
action against any person for passing of goods or services as those of another person
and seek for the appropriate remedy.18 In order to establish the right of action under
the law of passing off the following criteria is to be fulfilled19:

a) First, he must establish a goodwill or reputation attached to the goods or

services which he supplies in the mind of the purchasing public;
b) Second, he must demonstrate a misrepresentation by the defendant to the
public (whether or not intentional) leading or likely to lead the public to
believe that goods or services offered by him are the goods or services of
the plaintiff; and
c) Third, he must demonstrate that he suffers or is likely to suffer damage by
reason of the erroneous belief engendered by the defendant's
misrepresentation that the source of the defendant's goods or services is
the same as the source of those offered by the plaintiff.

III. GENERAL ISSUES PERTAINING TO TRADEMARKS INFRINGEMENT AND

PROTECION ON THE INTERNET

13
Section 56 (3) TMA.
14
Section 58 TMA.
15
Section 59 TMA.
16
Section 60 TMA.
17
Section 8 (2) of Trade Description Act 2011
18
Section 82 (2) TMA.
19
Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873
In so far as trademarks infringement on the internet, the general principle in regards
to trademark protection is still applied. Example of which can be seen in the case of
Siti Aishah Aisikin Razali v. Seri Asmara Salimin [2019] 1 LNS 396. In this case,
the Plaintiff is a sole proprietor trading in the style and name of Perfect Lady Trading.
She is also the registered proprietor of the trademark of Perfect Lady. The Plaintiff in
late 2017 discovered that the Defendants had in their course of trade used a trademark
that is identical or similar to the Perfect Lady trademark in the social media particularly
Facebook and Instagram. The Plaintiff notified the Defendant to cease and desist but
the Defendants failed, refused or neglected to heed the Plaintiff's notification.

The Defendants contended that the trademark used by them was of minor similarity if
not dissimilar to the Perfect Lady trademark and that the words "Perfect Lady" are
common generic words. The Defendants principally sold juices unlike pills that are sold
by the Plaintiff. There was thus no deception or confusion caused to the public
consumers. The used the words "Perfect Lady" is in good faith to illustrate the
character or quality of their goods. The Defendant emphasized that they were only
advertising and selling their goods for sale online in the social media whereas the
Plaintiff's goods were sold via retailers, agents and distributors as well as online in the
social media.

The Court find that there is no distinctive connection between the Defendants' juice
products and the after-effect results as that claimed by the Defendants in the usage of
the "Perfect Lady" words or mark on the Defendants' product packaging. Further, from
the packaging above, the words "Perfect Lady" has even outshone the Defendants'
own product brand Rich Glow. The Court then draw conclusion that it was probably
done to ride on the popularity of the Plaintiff's product if not also passing off as the
Plaintiff's product. This claim of the Defendants here is therefore not bona fide.

In addition to the above, the Court can also apply the current interpretation and
principle under the law of trademark in the case of trademark infringement in the
internet. In the case of 30 Maple Sdn Bhd v. Siti Safiyyah Mohd Firdaus Chew
[2019] 1 LNS 404, the Plaintiff is a company in the business of manufacturing and
sale of clothing whereas the Defendant is a social influencer. Around May 2017, the
Plaintiff discovered that the Defendant was actively advertising, and selling
headscarves and snow cap bearing the Plaintiff's Trademarks through her Instagram
account. Although the Defendant has agreed to put down the infringed content, on
May 2018, the Plaintiff again discovered that the Defendant had again re-commenced
to promote and sell the infringing products through her Instatories as well as Facebook
account.

The Court found that although the Defendant is an individual, the fact that she is
offering for sale of the Infringing Products in her social media platforms amounted to
the use of the Plaintiff's Trademarks on an advertisement. Further, the Defendant
having published for sale Infringing Products bearing the Plaintiff's Products in the
social media amount to advertising circulars or other advertisement representing the
Plaintiff as registered proprietor or user using the Plaintiff's Trademarks in breach of s.
38(1)(b) of the TMA. Although the words "advertising circular" and "advertisement"
used in ss. 38(1)(b) and (c) of the TMA are not defined, the Court has defined it through
the ordinary meaning of "advertising" in the Black's Law Dictionary (8th edn.) p.168 as
the action of drawing the public's attention to something to promote its sale and the
business of producing and circulating advertisements.

From the trademark owner’s perspective, promoting and selling products vide the
internet can also rebut the allegation of non-use by other party, particularly the infringer
of trademark. This can be seen in the case of Abercrombie & Fitch Co & Anor v.
Fashion Factory Outlet Kl Sdn Bhd & 4 Ors [2007] 1 LNS 486. In this case, from
the facts made available it clearly show that there is infringement of the 2nd Plaintiff's
Registered Trade Mark "ABERCROMBIE & FITCH" and "ABERCROMBIE" by the
Defendants.

The Defendants in defend has raised the issue the alleged non-use of the 2nd Plaintiff's
Registered Trade Marks by the Plaintiffs. The Court finds that it is incorrect and
misleading to say that the Plaintiffs have not used the 2 nd Plaintiff's Registered Trade
Marks in Malaysia as the Plaintiffs operate and maintain three (3) e-commerce
websites which sell their products to various countries worldwide including Malaysia.

In this case, the Plaintiff's products including articles of clothing bearing the
2nd Plaintiff's Registered Trade Marks are available for purchase over the Internet. All
these websites are accessible to all customers who have access to the Internet
including customers and/or potential customers in Malaysia. The Plaintiffs have in fact
sold and shipped products bearing the 2nd Plaintiff's Registered Trade Marks to
Malaysia customers in Malaysia. The Court therefore held that sale of goods bearing
a trade mark over the Internet or via a website has been recognised as a use of the
trade mark.

In this case, the Court has made reference to several jurisdiction to explain the issue
of use or non-use of trademark via the internet. In the case of 1-800 Flowers Inc. v.
Phonenames Ltd. [2002] FSR 12 CA, it was said that placing a mark on the internet
from a non-United Kingdom location would not suffice. An active move, like direct
encouragement to purchase the product or advertisement, would be necessary in
order to establish the necessary use.

Further, in the United States personal jurisdiction cases, it can be divided into three
(3) categories:

(1) Active Web Sites: cases where Defendants actively conduct business on
the internet in the forum state and personal jurisdiction is found;
(2) Intermediate Web Sites: interactive web site in cases where a user
exchanges data with the host computer. In such cases, jurisdiction is
determined by examining the level of interactivity and commercial nature
of the information exchange;
(3) Passive Web Sites: sites that merely provide information or
advertisements. The Court refuse to find personal jurisdiction in such
cases.

Another issue that often related infringement of trademark on internet is with regards
to the domain name. Domain name is a common term used among those who use the
internet or by anyone who is familiar with the internet. A domain name is a unique
alpha-numeric name which is a human-friendly address for a website. Generally, the
owner will use their trade mark as the domain name in order for the public to identify
and access to their webpage.

Domain name registration is based on first come first serve basis. In Malaysia, domain
name is registered by MYNIC, an agency under Ministry of Science, Technology and
Innovation (MOSTI), and it is regulated by Malaysian Communication and Multimedia
Commission (MCMC). It is stated that the registration of domain name shall be
considered to be abusive when all the following conditions are met:

a) the registration is identical or misleadingly similar to a trade or service mark

in which the complainant has rights
b) the holder of the domain name has no rights or legitimate interests in
respects of the domain name; and
c) the domain name has been registered and is used in bad faith.
In Malaysia, the domain name dispute may be brought to the Asian International
Arbitration Center. In the alternative, the owner of a business can also sue the person
using its name or similar name in the domain name for passing off. In the case of Intel
Corporation v. Intelcard Systems Sdn Bhd & Ors [2004] 1 CLJ 550, the plaintiff
came to know about the 1st defendant in November 2001 when its solicitors stumbled
across www.intelcardsystems.com. The domain name is visually deceiving and any
ordinary member of the public will tend to associate the 1st defendant and its product
as the plaintiff's. This is even more so since the plaintiff is manufacturing
microprocessors, which forms the basis of smart cards, which the 1st defendant is
dealing in. The plaintiff feels that the 1st defendant's services and products are wanting
in quality and as such would cause irreparable damage to the plaintiff's well
established goodwill and reputation.

The Court find that the Plaintiff had no doubt established that it had goodwill and
reputation of the name 'Intel'. The plaintiff manufactured microprocessors and the 1st
defendant dealt with smart cards. However, the plaintiff's microprocessor and Intel
architecture powered these smart cards. The relationship was close. It was such that
any likely customers in the trade might be forgiven to think that the 1st defendant was
in some way connected to the plaintiff, such as being its subsidiary, dealing in smart
cards. The incorporation of the word "Intel" created such misrepresentation.

In this case, the Court rule that a cause of action for passing off may lie even in a case
where the plaintiff and the defendant are not competing in the same kind of trade. The
plaintiff has to establish that there is a real risk that a substantial number of persons
among the relevant section of the public will believe that there is a business connection
between the plaintiff and the defendant.

IV. PROTECTION OF TRADEMARKS IN SOCIAL MEDIA

In order to prevent from attracting liability due to the wrongful or unlawful use of the
social media platform by the user to commit act which violate the intellectual property
rights of another party including trademarks, social media administrator will introduce
their own set of standards on trademark protections. They will also establish a set
procedures and regulations for the aggrieved party to lodge their complaint. Generally,
the complainant would have to provide details of his trademark registrations, proof of
registrations and the explanation on how the content in a post in social media has
infringed his trademarks.

For instance, under Facebook’s Terms of Service and Community Standards, every
user can only post their content onto Facebook social media that does not violate the
Terms of Service and Community Standards which includes intellectual property rights
of another party, particularly trademarks.20

The Facebook administration team has provided their definition on trademark where
a trademark is a word, slogan, symbol or design (for example, a brand name or logo)
that a person or company uses to distinguish their products or services from those
offered by others and a trademark is protectable when it’s used in a distinctive way to
identify a product or service.21

According to Facebook administration team, the situation where trademark

infringement happens is when:

 A person uses a trademark owner’s trademark (or similar trademark) without

permission.
 That person’s use is in commerce, meaning that it’s done in connection with the
sale or promotion of goods or services AND
 That use is likely to confuse consumers about the source, endorsement or
affiliation of the person’s goods or services.22

Article 23 of the Facebook Community Standards speaks that Facebook is committed

in protecting intellectual property rights as they are paramount to the development of
creativity and innovation. The Facebook user is to require to ensure that he has the
right towards the content he shared. All users are expected to respect the legal rights
including the trademarks of other party.23

Paragraph 1 of Part 3 Section 2 of the Facebook Terms of Services provides that user
shall not use the Facebook social media to do or share anything that infringes or
violates someone else's rights, including their intellectual property rights24. Failure to
comply with the terms will result the content being removed, or its access been
restricted. User whose content has been removed on the ground of violating the
Community Standards and the Terms of Services can request for review except in
cases where there is a serious or repeated violation of the Terms and Standards.

However, even if there is trademark infringement occurred, Facebook has cautioned

that it will not provide dispute resolution platform or adjudicate over the trademark
disputes. The aggrieved party who claim that his trademark has been infringed by one

20
https://www.facebook.com/help/507663689427413
21
https://www.facebook.com/help/1378807958858854?helpref=uf_permalink
22
https://www.facebook.com/help/349534658401968?helpref=uf_permalink
23
https://www.facebook.com/communitystandards/respecting_intellectual_property
24
https://www.facebook.com/legal/terms
of the Facebook user can lodge a report by following the procedure provided by
Facebook and to fill up the forms to provide necessary details.25

Once the Facebook administration team find that there is a case of trademark
infringement, they will remove the content posted. After that, particulars such as report
number, rights owner’s name, and email address provided by the reporting party,
description of the rights owner’s trademark and description of the removed content will
be sent to the person who post the content who can seek for further appeal or review
accordingly.26

If the default party continue and repeatedly post the content constitute trademark
infringement, the person’s account may be disabled or his Page removed under
Facebook’s repeat infringer policy.27 In some cases, his ability to post photos or videos
may be limited, and also lose access to certain features or functionality on Facebook.
The actions taken under the policy may depend on the nature of the reported content
and where it was posted.

These are the most that the Facebook administration team can assist the aggrieved
party who suffer from trademark infringement. As what the Facebook advise, other
action and remedy that the aggrieved party can only be obtained by way of direct
communication or action against the default party. In cases such as trademark
infringement by a third-party app on Facebook, there is nothing Facebook can do as
these apps are operated by third-party developers and Facebook does not have
control over its content.28

Although Facebook administration can only stop the infringement action by way of
removing the content or deactivating the social media account, these can still be a
useful way to curb trademark infringement in social media, if parties can trace the
incident of infringement effectively and to take action against it. However, this is not
really a viable way in doing it given the fact that there are billions of Facebook users
around the world. It is practical impossible for the trademark owners to search
manually on which content and which user has infringed his trademark.

In any event, if we know how to utilise the advancement of technology, the new
technology can always help in solving the new problems created by the technology
itself. In the case of protecting trademarks in the social media, the effective use of big

25
https://www.facebook.com/help/191999230901156?helpref=uf_permalink

26
https://www.facebook.com/help/509605252475371?helpref=uf_permalink

27
https://www.facebook.com/help/350712395302528?helpref=uf_permalink

28
https://www.facebook.com/help/150318481705777?helpref=uf_permalink
data could give a lot of help. For these purpose, Facebook has introduced a program
named Commerce & Ads IP Tool.

To participate and to be entitled to use this program, there will be a screening process
where the trademark owners need to prove that they are the genuine and the real
owners of the trademark. After that, this program can be used to help the trademark
owner to search in all advertisements, Marketplace posts and group sale posts and to
report any content that they identify as infringing their trademarks.

Username

Another issue on social media that haunt the trademark owner is that when an
individual registered a username incorporating a trademark for his own personal use.
A lot of social media administrator do not consider this kind of action violate their policy
on trademark protection. For instance, Instagram has provides the following guidance
on its trademark policy page that:

Using another’s trademark in a way that has nothing to do with the product or service
for which the trademark was granted is not a violation of Instagram’s trademark
policy.29

Furthermore, some social media administrator also impose policy on the choice of
username on a first-come, first-served basis and not to be reserved. This is what
happens in Instagram as well. In such cases, some people suggest that the best way
of tackling this kind of problem is by way of preventative registration of usernames.30
However, this might not be a practical way as any individual can easily add any letter
or symbol on the name and it will somehow shows that the name is associated to the
trademark.

To avoid confusion and deceit by the irresponsible party who escape from the social
media’s trademark policy, some social media such as Facebook and Instagram have
introduce the identity verification feature. In the case of Facebook and Instagram, there
will be a verified badge appears next to a page or account’s name in search and on
the profile. The appearance of the verified badge means that the account owner has
undergone series of verification process and that the Facebook and Instagram have
confirmed that the account is the authentic presence of the brand or name that it
represents.31

Making Photos of Trademarks32

29
https://help.instagram.com/101826856646059
30
https://www.socialmedialawbulletin.com/2016/09/thats-mark-enforcing-trademark-rights-social-media/
31
https://www.facebook.com/help/1288173394636262
32
Lien Verbauwhede, Legal Pitfalls in Taking or Using Photographs of Copyright Material, Trademarks and
People, [2006], https://www.wipo.int/sme/en/documents/ip_photography_fulltext.html
Unlike copyright law, trademark law as such does not restrict the use of a trademark
in a photograph and subsequently being posted to the social media or other internet
webpages. Essentially trademark law forbids the use of a trademark in a way that can
cause confusion regarding the affiliation of the trademark owner to the image. If
consumers are likely to mistakenly believe that a photograph was sponsored by the
trademark owner, then there may be trademark infringement. For instance, a
photograph containing the Nike trademark on sportswear could result in trademark
infringement. In fact, by such use it would be assumed that trader are trying to
appropriate some of the goodwill associated with the Nike trademark. Consumers will
presumably think that the fabrics are affiliated with the Nike trademark.

V. ROLE OF INTERNET SERVICE PROVIDERS (“ISP”)

The role of internet service providers are not clearly provided under both TMA and
TMB. Nevertheless, the role of ISP in respect to trademark protections can still be
seen from regulations imposed by the Malaysian Communication and Multimedia
Commissions (“MCMC”).

As the Communication and Multimedia Act 1998 (“the Act”) seeks to establish a
regime of self-regulation by providing for the creation of industry forums, an industry
body may be designated or appointed as an industry forum if the MCMC is satisfied
that the criteria stipulated in Section 94 of the Act 1998 has been fulfilled.

In March 2001, the MCMC designated the Communications and Multimedia Content
Forum of Malaysia (“CMCF”) as the Content Forum. The CMCF governs content by
self-regulation in line with the Malaysian Communications and Multimedia Content
Code (“Code”). The Code is a set of industry guidelines on the usage and/or
dissemination of content for public consumption. The Code has now been officially
registered with the MCMC with effect from 1 September 2004.

Further, the Constitution of the CMCF states that a Complaints Bureau be established
under Article 8 of the Code to deal with complaints. The Bureau is empowered by the
Council to impose sanctions on any member who is considered to have breached the
Content Code.

The Code

The relevant part of the Code for the parties who provide online Content or those who
provide access to online content through present and future technology is Part 5 of the
Code. The Internet Access Service Providers are one of the parties to this.
Under Section 100 of the Act, a person who fails to comply with a direction of MCMC
that the for person complies with any provision of a voluntary industry code shall be
liable to pay to the MCMC a fine not exceeding two hundred thousand (200,000) ringgit.

Further, Appendix 2 of the Code provides that, apart from the Act, licensees under the
Act may need to be aware of the following Acts of Parliament and are advised to have
sufficient resources and expertise to ensure compliance where necessary. These
includes Trade Description Act 1972 and Trademarks Act 1976.

Compliance of the Code as a legal defence

As far as the liability of the ISP is concerned, Section 98 of the Act provides that
compliance with the Code is a legal defence. Section 98(2) of the Act provides that
‘compliance with a registered voluntary industry code shall be a defence against any
prosecution, action or proceeding of any nature, whether in a court or otherwise, taken
against a person (who is subject to the voluntary industry code) regarding a matter
dealt with in that code’.

Notwithstanding the above, paragraph 6.4 of Part 2 of the Code states that all
applicable Malaysian Laws including but not limited to sedition, pornography,
defamation, protection of intellectual property and other related legislation are to be
complied with.

Duties of Internet Access Service Provider under the Code

The Code has set out the guidelines to be followed by an Internet Access Service
Provider (“IASP”) in Part 5 of the Code.

An IASP shall comply with and incorporate terms and conditions in the contracts and
legal notices as to terms of use with subscribers of their services. This shall include
the following terms:

(1) Subscribers will comply with the requirements of Malaysian law including, but
not limited to, the Code and shall not provide prohibited Content nor any
Content in contravention of Malaysian law;
(2) The IASP will have the right to withdraw access where a subscriber contravenes
the above; and
(3) The IASP shall have the right to block access to or remove such prohibited
Content provided such blocking or removal is carried out in accordance with the
complaints procedure contained in the Code.

The Code recognises the concept of innocent carrier. Code Subjects providing access
to any Content but have neither control over the composition of such Content nor any
knowledge of such Content is deemed an innocent carrier for the purposes of the Code.
An innocent carrier is not responsible for the Content provided. Further, it is also a
defence that access providers had adhered to the general measures provided by the
Code.

However, once an IASP is notified by the Complaints Bureau that its user or subscriber
is providing prohibited Content and the IASP is able to identify such subscriber the
IASP will take the following steps:

Within a period of 2 working days from the time of notification, inform its subscriber to
take down the prohibited Content.

(1) Prescribe a period within which its subscriber is to remove the prohibited Content,
ranging from 1 to 24 hours from the time of notification.
(2) If the subscriber does not remove such prohibited Content within the prescribed
period, the IASP shall be entitled to suspend or terminate the subscribers’ access
account.

VI. CONCLUSION

In short, both our TMA and TMB do not specifically deal with infringement of
trademarks on the internet. Nevertheless, the Court can always interpret the current
legal principle to in the context of trademarks infringement on the internet and social
media. After all, internet and social media are just another form of communication.
With that, all the protections that we have for the current trademark’s protection can
always be applied to trademarks in the internet.