MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Nur Jannah Khairul Anuar, LAW Partnership
10.5 Customs Seizures of Counterfeits or Parallel Imports An aggrieved person can lodge complaints to the enforcement division of the Ministry of Domestic Trade and Costs of Living. Once a complaint has been made, the enforcement officers will usually carry out an investigation to initiate an enforcement raid action against an infringer. Some of the details and/or evidence required by the enforcement division prior to any raid being conduct - ed are: • details of the owner of the trade mark/copyright; • details of the infringing act(s); • any surveillance report conducted; • authorisation from the owner to the authorised representatives; and • where it involves foreign brand owners, a power of attorney. Decisions for both trade mark and copyright infringe - ment claims can be appealed from the High Court to the Court of Appeal. This is typically done by: • filing a notice of appeal at the High Court; • filing the records of appeal and memorandum of appeal at the Court of Appeal; and • filing written submissions at the Court of Appeal. The records of appeal includes: • the pleadings for both parties (statement of claim, defence, reply to defence); • documents used by parties during the trial (bundle of documents); • notice of appeal; • memorandum of appeal (essentially the grounds of appeal); and • grounds of judgment from the High Court. 11. Appeal 11.1 Appellate Procedure
Opposing Interim Injunctions Some of the grounds to oppose an interim injunction are: • delay; • suppression of material facts; and • no triable issue or serious issue to be tried. 10.2 Monetary Remedies An assessment of damages or an account of profits is usually done after an infringer is found liable. This would be done in separate proceedings. There are a number of different ways that the court may award damages including calculating any royalty that would have been paid or damages for licence fees lost. Courts also have regard to the flagrancy of the infringement. In the event the infringement is caused by a direct competitor, there is also a route for an account of profits to be done, ie, the loss in sales that the owner of the trade mark/copyright suffered and the profits gained by the competitor. Under the CA 1987, statutory damages for an infringe - ment, as stated under Section 37 of the CA 1987 would be no more than MYR25,000 for each infringing work and not more than MYR500,000 in total. 10.3 Attorneys’ Fees and Costs The losing party would have to pay the costs of litiga - tion including the court imposed tax (otherwise known as allocator fees). Although a litigant would usually expect to be able to recover 100% of the legal fees paid to solicitors, it is unlikely that the court would allow a full recovery of these legal fees. 10.4 Ex Parte Relief Ex parte applications such as ex parte interim junc - tions, Anton Piller Orders, delivery up orders or door - step delivery up orders are common relief avenues a litigant can pursue without notifying a defendant. Under the Rules of Court 2012, the ex parte injunc - tion will automatically lapse after 21 days and an inter partes hearing would be fixed within 14 days from the date the ex parte order was granted.
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