MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Ashlyn Kwong, LAW Partnership
• when a party uses their name or the name of their place of business in good faith; • when a party uses a sign to indicate the kind, quality, intended purposes, value, geographi - cal origin or other characteristics of goods or services in good faith; and • where the use is for a non-commercial pur - pose. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) Defences to copyright infringement can be found in Section 13(2) of the CA 1987. They include: • fair dealing for purposes of research, private study, criticism, review or reporting of news or current news provided that it is accompanied by an acknowledgment of the title of the work and its authorship (except where the work is in connection with doing any acts for the purposes of non-profit research, private study and the reporting of current events by means of a sound recording, film or broadcast); • acts by way of parody, pastiche or caricature; and • inclusions in a film or broadcast of any artistic work situated in a place where it can be viewed by the public. 9.3 Exhaustion Exhaustion of Trade Mark Rights The doctrine of exhaustion was analysed by the Malaysian Federal Court in the case of Guang - zhou Light Industry & Trade Group Ltd & Ors v Lintas Superstore Sdn Bhd [2022] 4 MLJ 339 in the context of parallel imports. In this case, the Federal Court held that importation of products into Malaysia and their subsequent sale cannot be done without the consent of the trade mark owner. However, this is only in the context of parallel imports.
Based on the decision by the Federal Court, it would appear that the courts have taken a restrictive approach to the applicability of the doctrine of exhaustion where consent from the trade mark owner would need to be obtained before a defence of exhaustion can be invoked. Exhaustion of Copyright Section 13(1)(a) of the CA 1987 gives a copy - right owner the exclusive right to control the distribution of copies of the copyrighted work. However, this is limited to the first distribution of the work, be it in a physical or digital format. Any subsequent distribution of the work would likely be caught under the doctrine of exhaus - tion. At present, there is no distinction between physical distribution and the distribution of digi - tal content. Judges always have discretion in ordering rem - edies, especially where it concerns any interim or permanent injunctions. For permanent injunc - tions, the courts would usually award a trade mark/copyright owner a permanent injunction against an infringer (so long as it is pleaded as a relief sought) once infringement is established. Interim Injunctions In general, a party seeking an interim injunction would need to satisfy the test laid down in the UK case of American Cynamid Co. v Ethicon Ltd [1975] AC 396, which was adopted and applied in Malaysia in the case of Keet Gerald Francis Noel John v Mohd. Noor Bin Abdullah & Ors [1995] 1 MLJ 193 which specified the following need to be established: 10. Remedies 10.1 Injunctive Remedies Permanent Injunctions
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