MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Nur Jannah Khairul Anuar, LAW Partnership
Copyright Copyright will usually subsist if the work is made in Malaysia. However, copyright protection is afforded and can be enforced in Malaysia if the works were first produced in a Berne Convention member country. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants It is uncommon for a defendant or a potential defend - ant to file for a declaratory judgment proceeding in Malaysia, especially for non-infringement, although that doesn’t necessarily mean that it cannot be done. However, it would be commonplace for a defendant to merely defend any action of copyright/trade mark infringement rather than initiating a lawsuit for non- infringement. A defendant can file for a protective order in Malaysia, especially where it concerns the confidentiality of cer - tain documents. When a protective order is granted by the High Court, it would limit the disclosure of certain documents or the redacting of documents where con - fidentiality of the documents is an issue. 7.7 Small Claims In Malaysia, trade mark or copyright infringement claims are usually brought before the High Court. Par - ties may opt for judge-led mediation to resolve the matter quicker and reduce costs. 7.8 Effect of Trade Mark and Copyright Office Decisions Decisions on trade mark or copyright infringement are usually made by the High Court which is the Court of First Instance. 7.9 Counterfeiting and Bootlegging Counterfeit Goods Counterfeit goods are defined under the TMA 2019 as goods that are infringing goods in relation to a regis - tered trade mark and the sign borne by the goods, or their packaging is a counterfeit trade mark. A coun - terfeit trade mark is defined as being a sign that is identical with the registered trade mark, is calculated to deceive, is applied to goods or services without the express or implied consent, conditional or otherwise of the registered proprietor and falsely represents that
desist letter to be issued to the infringer first prior to the commencement of legal proceedings. Copyright Infringement Lawsuit Requirements It is not mandatory for a copyright to be registered in Malaysia. Although a CVN or a statutory declaration would constitute prima facie evidence of copyright ownership, there are other avenues to prove owner - ship of copyright, especially through witness testi - mony during a trial. 7.5 Lawsuit Procedure Initiation of Civil Proceedings Claims for copyright or trade mark infringement are usually initiated at a dedicated IP court in the High Court in Malaya. Costs Trade mark infringement Typical incidental costs prior to filing a lawsuit would include a cease and desist letter as a means to offer an infringer the chance to resolve the matter out of court. Copyright infringement For copyright infringement claims, typical costs that would arise prior to the filing of a lawsuit are for the affirmation of a statutory declaration by the copyright owner in line with Section 42 of the CA 1987. This is to allow the copyright owner to have prima facie evi - dence of copyright ownership. Costs that would arise here would be the payment for affirming the statutory declaration before a Commissioner for Oaths. Need for Legal Representation It is preferable for parties to be legally represented by a solicitor in Malaysia should they choose to initiate a claim for copyright or trade mark infringement. Foreign Owners Trade mark As trade marks are territorial in nature, a foreign owner would need to register the mark in Malaysia prior to initiating legal proceedings for infringement, unless it is a well-known mark.
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