MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Ashlyn Kwong, LAW Partnership
Where there is an ongoing infringement, both the CA 1987 and the TMA 2019 provide that the limitation period would accrue from the date of the infringement. Otherwise, a defendant would be able to rely on other defences such as acqui - escence, laches or delay to defend a claim for copyright or trade mark infringement. 7.2 Legal Claims for Infringement Lawsuits and Their Standards Trade Mark Infringement A trade mark would need to be registered in Malaysia before a trade mark owner can bring a claim for trade mark infringement. Claims of infringement of unregistered trade marks are usually brought under the tort of passing off. Under usual circumstances, it would constitute an infringement if a person uses a sign which is identical 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 reg - istered 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 infringe - ment suits to be brought against an infringer, the TMA 2019 also expands the scope of infringe - ment to include secondary users. As such, the act of even stocking goods bearing an infring - ing 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 Performance Audio & Car Accessories Enterprise) [2009] 3 MLJ 525, the necessary ele - ments 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 indi - rectly; and • that what had been infringed must constitute a substantial part of the original work. Under Malaysian copyright laws, there is no dis - tinction between direct infringement and con - tributory/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 registra - tion 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.
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