MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Ashlyn Kwong, LAW Partnership
Bootlegging Although not generally referred to as bootlegging in Malaysia, bootlegging is illegal in Malaysia (be it bootlegged alcohol or recordings). Similar to the process involving counterfeit products, a complaint will need to be made to the Ministry of Domestic Trade and Costs of Living for an investigation to be commenced by the enforce - ment division. This will likely end up in a raid action commenced by the enforcement division which would lead to criminal proceedings. A copyright owner would also be able to initiate a civil lawsuit against any bootlegged products. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings Infringement proceedings can only be initiated in the event the trade mark is registered. Claims of infringement of unregistered trade marks are usually brought under the tort of passing off. Copyright Infringements There is no mandatory requirement for a copy - right owner to register its copyright in Malaysia. However, a voluntary notification of a copyright or a statutory declaration showing copyright ownership under Section 42 of the CA 1987 would be prima facie evidence of ownership. This would prevent voluminous documents hav - ing to be brought to court to prove copyright ownership. These attract statutory presumptions that also assist in obtaining injunctive reliefs. See 7.5 Lawsuit Procedure . 8.2 Effect of Registration Trade Mark Infringements
The burden would then shift to the infringer to make a positive assertion that the ownership of the copyright does not belong to the plaintiff. 8.3 Costs of Litigating Infringement Actions Trade Mark Infringement Costs These are between MYR100,000 and MYR150,000 (USD20,000 and USD35,000). Copyright Infringement Costs These are between MYR200,000 and MYR250.000 (USD40,000 and USD50,000). Factors Impacting Costs Various factors can affect infringement proceed - ing costs. These include: • the length of the trial; • the number of witnesses and experts (if any); • pre-trial/interlocutory applications being filed in court; • conducting a public survey (specifically for trade mark infringement); • an application for interim injunctions/Anton Piller Orders; and • defending a counterclaim (if any). 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement The usual defence that a defendant presents is that there is non-infringement of the trade mark, ie, the 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 statutory defences which include:
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