MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Ashlyn Kwong, LAW Partnership
Copyright Management Information There are no laws in Malaysia governing cop - yright management information and it is not defined under the CA 1987. 7.3 Factors in Determining Infringement Copyright Infringement Some of the factors that should be considered in determining whether use of copyright consti - tutes infringement are: • the nature of the copyrighted work; • whether copyright subsists in the work; • whether there is any evidence of substantial reproduction of the copyrighted work; • whether a causal link can be established; and • expert testimony. Trade Mark Infringement The factors to determine trade mark infringe - ment are as follows: • where trade marks are not identical and are used in relation to similar goods or services, whether there is likelihood of confusion among members of the public; • whether there was prior use of the trade mark by the alleged infringer; and • whether there is any evidence of a licence provided to the alleged infringer. 7.4 Prerequisites and Restrictions to Filing a Lawsuit Trade Mark Infringement Lawsuit Requirements To file a trade mark infringement lawsuit, the trade mark would need to be registered in Malaysia. It is common (although not manda - tory) for a cease and 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 regis - tered in Malaysia. Although a CVN or a statu - tory declaration would constitute prima facie evidence of copyright ownership, there are other avenues to prove ownership of copyright, espe - cially through witness testimony 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 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 evidence of copyright owner - ship. Costs that would arise here would be the payment for affirming the statutory declaration the matter out of court. Copyright infringement
before a Commissioner for Oaths. Need for Legal Representation
It is preferable for parties to be legally represent - ed by a solicitor in Malaysia should they choose to initiate a claim for copyright or trade mark infringement.
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