Intro

The issue of likelihood of confusion arises when a registered proprietor wishes to

claim that a trademark infringement exists through the non-permissive use of a sign, that is
identical1 or similar2 in the course of trade in relation to the goods or services similar or
identical with those of which the trademark is registered. Under Section 9(1) of the
Trademarks Act 2019, it is explicitly stated that the Registrar of the Court should take into
account all relevant factors3 in the circumstances including if the trademark is likely to be
associated with an earlier trademark4 in determining whether the use of a trademark has the
likelihood to cause confusion on the public.

Next, the requirement of evincing the likelihood of confusion comes into the picture
once the registered proprietor has proven that the defendant have used either an identical or a
similar sign on a similar or identical goods or services. 5 In order to prove that there is a
likelihood of confusion, the plaintiff must established that if similar marks identical to that of
their trademark, were used in relation to another party’s goods or services, the public would
be confused.6 Such confusion must cause the public to wrongly identify the goods of the
defendant’s to be the plaintiff’s.7 The underlying rationale for this provision is the protection
of public instead of the traders or their competitors.

In this paper, we will look at the importance of the likelihood of confusion test and
the court’s approach on this test in two other jurisdictions outside Malaysia. At the end of this
paper, evaluations and analysis on whether the current approach in Malaysia requires any
improvement based on the comparisons with the other two jurisdictions will be provided.

Importance of LOC test

1
Section 54(2)(a) of Trademarks Act 2019.
2
Section 54(2)(b) of Trademarks Act 2019.
3
In Lloyd Shuhfabrik Meyer v Klijsen Handel BV, (Case C-342/97) [1999] 2 CMLR 1343,
the factors include determining the distinctiveness of the earlier trademark, the similarity and
the extent of its use on the goods or service in relation to the trade, the target market, and the
existence of competition in the course of business between the parties.
4
Section 9(1) of Trademarks Act 2019.
5
Syarikat Duasama Sdn Bhd v Abdul Aziz bin Ibrahim (t/a Radiant Star Enterprise) (Tiong
Sing Trading Co Sdn Bhd & Anor, third parties) [2018] MLJU 5
6
Caitlin Financial Corp NV v CA Seimer (M) Sdn Bhd & Anor [2001] 3 MLJ 423
7
Consitex SA v TCL Marketing Sdn Bhd [2008] 3 MLJ 574; Tohtonku Sdn Bhd v Supreme
(M) Sdn Bhd [1992] 2 MLJ 63; Elba Group Sdn Bhd v Pendaftar Cap Dagangan dan Paten
Malaysia [1998] 4 MLJ 105; Pianotist Co's Application (1906) 23 RPC 774.
Pianotist Co's Application (1906) 23 RPC 774.
There are many importance of the likelihood of confusion test, both during the pre-registered
period of a particular trademark and after a trademark has been registered.

One of it is it helps an individual planning to register a trademark to come up with a strong

trademark that has a distinct character8 from other goods or services. This would avoid the
Registrar to refuse the registration of the trademark, either on the absolute ground 9 or relative
ground10 of refusal, that there is a likelihood of confusion on the part of public after taking
into account all relevant factors. Hence, this smoothens the trademark registration process.
Additionally, this test provides a clear guideline on how individual planning to use their
trademarks should put more effort11 to ensure that their trademarks are not infringing other
registered proprietors’ trademarks in the respective course of trade.12

Next, this test is also essential to protect the registered proprietor’s rights on their trademark.
This test helps to detect such trademark confusion, if any, at an early stage whereby the
registered proprietor may file a lawsuit for trademark infringement 13 against another
individual before losing direct sales or having the brand reputation damaged due to the
similarities in the trademarks. On top of that, this test also helps to minimise the cost of
litigation that needs to be bear by the registered proprietor if the members of the public are
claiming against the actual trademark owner when in fact, they were confused by the
identical or similar trademarks to the extent that they had wrongly purchased goods or
subscribe to a service with a lower quality.14 It is noted that human beings have imperfect
memories and therefore can only recollect essential features of a mark rather than a mark in
its entirety sometimes. Therefore, this test helps to determine whether the person who
intended to purchase goods or service, sees the trademark in the absence of the other similar
or identical trademark, would be confused to think that the trademark before him is the one
he had intended to purchase based on his general recollection of memory.15

8
Section 2 of Trademarks Act 2019 where it means the trademark shall have the capability to
distinguish goods or service in relation to the use of it within the scope of what it was
registered on.
9
Section 23(5)(a) of Trademarks Act 2019.
10
Section 24(3) of Trademarks Act 2019.
11
7 Factors For Identifying Trademark Likelihood of Confusion (November 29, 2018). TrademarkNow.
https://www.trademarknow.com/blog/7-factors-for-identifying-trademark-likelihood-of-confusion
12
McCurry Restaurant (KL) Sdn Bhd v McDonalds Corporation [2009] 3 MLJ 774
13
Section 54 Trademarks Act 2019.
14
Commuri, S. (2009). The impact of counterfeiting on genuine-item consumers’ brand
relationships. Journal of Marketing, 73(3), 86-98.
MI & M Corporation & Anor v A Mohamed Ibrahim [1964] MLJ 392; Papparoti (M) Sdn
15

Bhd v Roti-Roti International Sdn Bhd & 2 Ors [2009] 5 AMR 326; P.J. Inbisco Niagatama v
Thus, it can be seen that this test is still relevant and significant in intellectual property law to
protect the registered proprietor as well as the public interest in the market.

Khee San Food Industry Sdn Bhd [1996] 1 CLJ 332.