MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Ashlyn Kwong, LAW Partnership
7.8 Effect of Trade Mark and Copyright Office Decisions Decisions on trade mark or copyright infringe - ment are usually made by the High Court which is the Court of First Instance. 7.9 Counterfeiting and Bootlegging Counterfeit Goods Counterfeit goods are defined under the TMA 2019 as goods that are infringing goods in rela - tion to a registered trade mark and the sign borne by the goods, or their packaging is a counterfeit trade mark. A counterfeit trade mark is defined as being a sign that is identical with the reg - istered trade mark, is calculated to deceive, is applied to goods or services without the express or implied consent, conditional or otherwise of the registered proprietor and falsely represents that 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 com - plaint 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 Reg - istrar 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 proceedings will then be brought against the counterfeiter for the sale of the counterfeit product. The trade mark owner is also at liberty to initi - ate civil proceedings against the counterfeiter for trade mark infringement.
Foreign Owners Trade mark
As trade marks are territorial in nature, a for - eign owner would need to register the mark in Malaysia prior to initiating legal proceedings for infringement, unless it is a well-known mark. Copyright Copyright will usually subsist if the work is made in Malaysia. However, copyright protection is afforded and can be enforced in Malaysia if the works were first produced in a Berne Convention member country. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants It is uncommon for a defendant or a potential defendant to file for a declaratory judgment pro - ceeding in Malaysia, especially for non-infringe - ment, although that doesn’t necessarily mean that it cannot be done. However, it would be commonplace for a defend - ant to merely defend any action of copyright/ trade mark infringement rather than initiating a lawsuit for non-infringement. A defendant can file for a protective order in Malaysia, especially where it concerns the con - fidentiality of certain documents. When a protec - tive order is granted by the High Court, it would limit the disclosure of certain documents or the redacting of documents where confidentiality of the documents is an issue. 7.7 Small Claims In Malaysia, trade mark or copyright infringe - ment claims are usually brought before the High Court. Parties may opt for judge-led mediation to resolve the matter quicker and reduce costs.
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