In order to ensure the validity of a trade mark, it is a requirement that the owner of the mark put their trade mark to use to indicate a connection in the course of trade to the goods or services applied for. While there are no decided court cases in Malaysia on the subject of use of a trade mark over the Internet as yet, decisions under the new Malaysian Dispute Resolution Procedure (MYDRP) are a useful guide to how the Malaysian courts may approach this issue. The MYDRP is modeled closely on ICANN’s UDRP and disputes under the MYDRP are heard by the Panelists at the Regional Centre for Arbitration Kuala Lumpur (RCAKL). The MYDRP governs only “.com.my” websites. Recent Panel decisions such as NEP Holdings (Malaysia) Bhd. v Liew Bin Dian t/a C & C Network and Volkswagen Group Singapore Pte. Ltd. v Webmotion Design have both made reference to the trade mark on the Internet. These decisions signify a trend towards accepting use over the Internet as “use” for trade mark purposes, as far as domain name disputes are concerned.
However, if the web server is located outside the relevant jurisdiction or the website has a country specific ccTLD or the website simply caters to another jurisdiction, the answer may be different. In the UK case of 800-Flowers Trade Mark it was held that a globally accessible website does not prima facie constitute use in the trade mark sense within the United Kingdom. The case further held that the question of use would very much depend on the circumstances, particularly the intentions of the website proprietor and what the average visitor comprehends upon accessing the website. Trade mark owners should note that the 800-Flowers case suggests that the provision of interactive facilities by the website owner may constitute use. If a consumer accesses a website and orders goods or services as a result of the advertisement or information on the website, this could arguably amount to use of the mark. This reasoning was also followed in the subsequent case of Euromarket Designs Incorporated v Peters & Anor.