MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Nur Jannah Khairul Anuar, LAW Partnership
trade marks are distinguishable, unlikely to deceive or cause confusion to members of the public or that the trade mark was not “used” as a trade mark. However, Section 55 of the TMA 2019 provides statu - tory defences which include: • when a party uses their name or the name of their place of business in good faith; • when a party uses a sign to indicate the kind, qual - ity, intended purposes, value, geographical origin or other characteristics of goods or services in good faith; and • where the use is for a non-commercial purpose. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) Defences to copyright infringement can be found in Section 13 (2) of the CA 1987. They include: • fair dealing for purposes of research, private study, criticism, review or reporting of news or cur - rent news provided that it is accompanied by an acknowledgment of the title of the work and its authorship (except where the work is in connection with doing any acts for the purposes of non-profit research, private study and the reporting of cur - rent events by means of a sound recording, film or broadcast); • acts by way of parody, pastiche or caricature; and • inclusions in a film or broadcast of any artistic work situated in a place where it can be viewed by the public. 9.3 Exhaustion Exhaustion of Trade Mark Rights The doctrine of exhaustion was analysed by the Malaysian Federal Court in the case of Guangzhou Light Industry & Trade Group Ltd & Ors v Lintas Super- store Sdn Bhd [2022] 4 MLJ 339 in the context of parallel imports. In this case, the Federal Court held that importation of products into Malaysia and their subsequent sale cannot be done without the consent of the trade mark owner. However, this is only in the context of parallel imports. Based on the decision by the Federal Court, it would appear that the courts have taken a restric -
tive approach to the applicability of the doctrine of exhaustion where consent from the trade mark own - er would need to be obtained before a defence of
exhaustion can be invoked. Exhaustion of Copyright
Section 13 (1)(a) of the CA 1987 gives a copyright owner the exclusive right to control the distribution of copies of the copyrighted work. However, this is limited to the first distribution of the work, be it in a physical or digital format. Any subsequent distribution of the work would likely be caught under the doc - trine of exhaustion. At present, there is no distinction between physical distribution and the distribution of digital content.
10. Remedies 10.1 Injunctive Remedies Permanent Injunctions
Judges always have discretion in ordering remedies, especially where it concerns any interim or permanent injunctions. For permanent injunctions, the courts would usually award a trade mark/copyright owner a permanent injunction against an infringer (so long as it is pleaded as a relief sought) once infringement is established. Interim Injunctions In general, a party seeking an interim injunction would need to satisfy the test laid down in the UK case of American Cynamid Co. v Ethicon Ltd [1975] AC 396, which was adopted and applied in Malaysia in the case of Keet Gerald Francis Noel John v Mohd. Noor Bin Abdullah & Or s [1995] 1 MLJ 193 which specified the following need to be established: • whether there is a bona fide serious issue to be tried; • where the balance of convenience lies; and • whether damages are an adequate remedy. Furthermore, there is also a usual undertaking as to damages provided by a plaintiff in the event the plain - tiff fails to prove their case or obtain a judgment for infringement.
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