chapter  12
13 Pages

The exhaustion defence to trademark infringement and parallel importation in Malaysia

WithLim Heng Gee

Under the present law in Malaysia, a limited form of international exhaustion defence is available to parallel importers of trademarked goods. From the preceding analysis, it is clear that the principle of international exhaustion or first sale doctrine is available to a parallel importer as a defence to registered trademark infringement in Malaysia. The court ruled that importation and sale of goods would infringe the Malaysian registered trademark owner’s rights. The judge adopted the term “parallel imports” as referring to goods which are lawfully manufactured overseas but imported and distributed in Malaysia by a person other than the registered proprietor of the trademark. In the present case, both the plaintiffs were regarded to have impliedly consented to the use of the trademark by the manufacturers of the blue pack Panadol in the United Kingdom. The complaint of breach of trademark was, therefore, without foundation as the defendants were selling genuine KENWOOD products.