MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Nur Jannah Khairul Anuar, LAW Partnership
the goods or services are genuine goods or actual services of the registered proprietor or a licensee of the registered trade mark. A trade mark owner will need to lodge a complaint with the Ministry of Domestic Trade and Costs of Living for the enforcement division to initiate an investigation. In the event the trade mark and the counterfeit are not identical, a Registrar of Trademarks verification will be required under Section 112 (3) of the TMA 2019 for the purposes of the investigation. If the evidence provided by the trade mark owner is sufficient, the Ministry of Domestic Trade and Costs of Living will commence a raid action against the counterfeiter. Criminal pro - ceedings will then be brought against the counterfeiter for the sale of the counterfeit product. The trade mark owner is also at liberty to initiate civil proceedings against the counterfeiter for trade mark Although not generally referred to as bootlegging in Malaysia, bootlegging is illegal in Malaysia (be it boot - legged alcohol or recordings). Similar to the process involving counterfeit products, a complaint will need to be made to the Ministry of Domestic Trade and Costs of Living for an investigation to be commenced by the enforcement division. This will likely end up in a raid action commenced by the enforcement division which would lead to criminal proceedings. A copyright owner would also be able to initiate a civil lawsuit against any bootlegged products. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings infringement. Bootlegging
ment of unregistered trade marks are usually brought under the tort of passing off. Copyright Infringements There is no mandatory requirement for a copyright owner to register its copyright in Malaysia. However, a voluntary notification of a copyright or a statutory declaration showing copyright ownership under Sec - tion 42 of the CA 1987 would be prima facie evidence of ownership. This would prevent voluminous docu - ments having to be brought to court to prove copy - right ownership. These attract statutory presumptions that also assist in obtaining injunctive reliefs. The burden would then shift to the infringer to make a positive assertion that the ownership of the copyright does not belong to the plaintiff. 8.3 Costs of Litigating Infringement Actions Trade Mark Infringement Costs These are between MYR100,000 and MYR150,000 (USD20,000 and USD35,000). Copyright Infringement Costs These are between MYR200,000 and MYR250.000 (USD40,000 and USD50,000). Factors Impacting Costs Various factors can affect infringement proceeding • the number of witnesses and experts (if any); • pre-trial/interlocutory applications being filed in court; • conducting a public survey (specifically for trade mark infringement); • an application for interim injunctions/Anton Piller Orders; and • defending a counterclaim (if any). 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement The usual defence that a defendant presents is that there is non-infringement of the trade mark, ie, the costs. These include: • the length of the trial;
See 7.5 Lawsuit Procedure . 8.2 Effect of Registration Trade Mark Infringements
Infringement proceedings can only be initiated in the event the trade mark is registered. Claims of infringe -
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