MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Nur Jannah Khairul Anuar, LAW Partnership
cal to the trade mark in relation to goods or services which are identical with those for which it is registered, without the consent of the registered proprietor under Section 54 of the TMA 2019. When the trade marks are similar and it is used in relation to similar goods or services, there is a further need to establish the likelihood of confusion to the public. Although it is more common for direct infringement suits to be brought against an infringer, the TMA 2019 also expands the scope of infringement to include secondary users. As such, the act of even stocking goods bearing an infringing mark for the purposes of selling or offering for sale to the public, could be classed as trade mark infringement in Malaysia. Copyright Infringement Copyright does not need to be registered in Malaysia before a claim for infringement is brought in court by a copyright owner. In the Malaysian case of Megnaway Enterprise Sdn Bhd v Soon Lian Hock (sole proprietor of the firm Per - formance Audio & Car Accessories Enterprise) [2009] 3 MLJ 525, the necessary elements needed to prove copyright infringement were: • a sufficiently similar objective between the original work or a substantial part thereof and the infringing copy; • a causal connection between the original work and the infringing copy, that is, the infringing copy must have been copied from the original work, whether directly or indirectly; and • that what had been infringed must constitute a substantial part of the original work. Under Malaysian copyright laws, there is no distinc - tion between direct infringement and contributory/ vicarious infringement. So long as an article infringes a copyright and all elements of infringement are shown, liability for copyright infringement can be found by the court. Dilution and Cybersquatting A claim for dilution is uncommon in Malaysia and there has not been a case brought in court for trade mark dilution. However, the Malaysian courts have awarded
damages for the dilution of the goodwill of a trade mark owner. Cybersquatting usually relates to the registration of a domain name. Where a domain name is identical or similar to a registered trade mark, or is being used in bad faith, an applicant can file a complaint with the Asian Domain Name Dispute Resolution Centre at its Kuala Lumpur office. Copyright Management Information There are no laws in Malaysia governing copyright management information and it is not defined under the CA 1987. 7.3 Factors in Determining Infringement Copyright Infringement Some of the factors that should be considered in determining whether use of copyright constitutes infringement are: • the nature of the copyrighted work; • whether copyright subsists in the work; • whether there is any evidence of substantial repro - duction of the copyrighted work; • whether a causal link can be established; and • expert testimony. Trade Mark Infringement The factors to determine trade mark infringement are as follows: • where trade marks are not identical and are used in relation to similar goods or services, whether there is likelihood of confusion among members of the public; • whether there was prior use of the trade mark by the alleged infringer; and • whether there is any evidence of a licence provided to the alleged infringer. 7.4 Prerequisites and Restrictions to Filing a Lawsuit Trade Mark Infringement Lawsuit Requirements To file a trade mark infringement lawsuit, the trade mark would need to be registered in Malaysia. It is common (although not mandatory) for a cease and
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