The Malaysia High Court’s recent decision in The Polo/Lauren Company, L.P. v RCB Marketing Sdn Bhd [2025] MLJU 4617 marks an important development in Malaysian trademark jurisprudence, particularly in its treatment of similarity infringement under Section 54(2)(b) of the Trademarks Act 2019, wherein the court demonstrates a clear preference for a structured, step-by-step approach – a marked departure from the traditionally dominant global assessment test derived from European jurisprudence in determining similarity infringement.

The court began by situating the claim within Section 54(2)(b) of the act, which provides as follows:

54… (2) “A registered trademark is infringed by a person who, without the consent of the proprietor of the trademark, uses in the course of trade a sign where—

…

(b) the sign is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered,

and the use of the sign is likely to cause confusion on the part of the public.”

This provision requires proof of three core elements: similarity of marks, similarity or identity of goods or services, and a likelihood of confusion. Rather than treating these requirements as part of a single holistic inquiry, the Court in drawing from both Malaysian and Singaporean authorities disaggregated the analysis into distinct, cumulative elements, each of which must be satisfied. This approach is consistent with a prior recent decision in Maxcare Success Sdn Bhd v Motionquest Sdn Bhd [2024] MLJU 3082, where the elements of similarity infringement were similarly articulated as separate requirements, even though the court did not specifically highlight its application of the step-by-step approach.

In developing this framework, the court acknowledged the divergence between the European “global assessment” approach and the Singaporean “step-by-step” methodology. Referring to the Singapore Court of Appeal’s decision in The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd [2006] 2 SLR(R) 690, the court noted that the latter requires a sequential analysis of: (i) similarity of marks, (ii) similarity of goods or services, and (iii) likelihood of confusion. This contrasts with the global assessment test, which evaluates these factors holistically and emphasizes their interdependence. The court further justified its preference by observing that Section 54(2)(b) is in pari materia with the equivalent provisions in Singapore and the United Kingdom, a position foreshadowed in Bestinet Technology Sdn Bhd v MYFWM System Sdn Bhd & Ors [2022] 9 MLJ 694.

This preference is evident in the court’s application of the test. The analysis begins with similarity of marks, assessed along visual, aural and conceptual lines, incorporating the “essential feature” doctrine and the principle of imperfect recollection. Only after finding substantial similarity did the court proceed to consider the similarity of goods, which it treated as a separate inquiry. The court then addressed the use of the defendant’s marks in the course of trade without consent, based on evidence of the defendant’s commercial activities.

The issue of likelihood of confusion was considered only after the preceding elements were satisfied, underscoring the sequential nature of the approach. The court applied the Pianotist test, examining the marks’ appearance and sound, the nature of the goods, the relevant consumers, and surrounding circumstances. It reiterated that proof of actual confusion is unnecessary; a real likelihood suffices. Factors such as the strength and market presence of the plaintiff’s registered marks were considered at this stage, rather than influencing earlier findings.

This structured methodology contrasts with the global assessment approach, under which all factors are evaluated in a single, composite inquiry, allowing for interdependence between similarity of marks, similarity of goods, and confusion. Under that approach, a weaker showing in one element may be offset by strength in another. By contrast, the step-by-step approach imposes a more disciplined framework where each element is a threshold requirement, and failure to establish any one is fatal. There is no scope for compensatory reasoning across elements.

The court’s preference appears grounded in both doctrinal and practical considerations. The language of Section 54(2)(b) lends itself to a disaggregated analysis, while the structured approach is well-suited to summary judgment, as demonstrated in this case. By isolating each requirement, the court can more readily determine whether any bona fide triable issue arises.

Importantly, the court does not wholly discard the global assessment approach. Concepts such as overall impression and the evaluation of visual, aural, and conceptual similarity remain relevant, but are confined to specific stages of the inquiry. The decision thus represents not a rejection of the global assessment test, but a recalibration of its role within a more structured analytical framework.

In conclusion, the decision signals a shift in Malaysian trademark law towards a sequential, element-based methodology for assessing similarity infringement. This enhances analytical clarity and aligns Malaysian jurisprudence more closely with Singapore. While the global assessment test retains some residual influence, its role is now limited to defined stages of the analysis, reinforcing the need for each element of infringement to be distinctly established.