MALAYSIA Law and Practice Contributed by: Dato’ Brian Law, Suaran Singh Sidhu, Woo Wai Teng and Ashlyn Kwong, LAW Partnership
10.3 Attorneys’ Fees and Costs The losing party would have to pay the costs of litigation including the court imposed tax (other - wise known as allocator fees). Although a litigant would usually expect to be able to recover 100% of the legal fees paid to solicitors, it is unlikely that the court would allow a full recovery of these legal fees. 10.4 Ex Parte Relief Ex parte applications such as ex parte interim junctions, Anton Piller Orders, delivery up orders or doorstep delivery up orders are common relief avenues a litigant can pursue without notifying a defendant. Under the Rules of Court 2012, the ex parte injunction will automatically lapse after 21 days and an inter partes hearing would be fixed within 14 days from the date the ex parte order was granted. 10.5 Customs Seizures of Counterfeits or Parallel Imports An aggrieved person can lodge complaints to the enforcement division of the Ministry of Domestic Trade and Costs of Living. Once a complaint has been made, the enforcement officers will usually carry out an investigation to initiate an enforce - ment raid action against an infringer. Some of the details and/or evidence required by the enforcement division prior to any raid being conducted are: • details of the owner of the trade mark/copy - right; • details of the infringing act(s); • any surveillance report conducted; • authorisation from the owner to the author- ised representatives; and
• whether there is a bona fide serious issue to be tried; • where the balance of convenience lies; and • whether damages are an adequate remedy. Furthermore, there is also a usual undertaking as to damages provided by a plaintiff in the event the plaintiff fails to prove their case or obtain a judgment for infringement. Opposing Interim Injunctions Some of the grounds to oppose an interim injunction are: • delay; • suppression of material facts; and • no triable issue or serious issue to be tried. 10.2 Monetary Remedies An assessment of damages or an account of profits is usually done after an infringer is found liable. This would be done in separate proceed - ings. There are a number of different ways that the court may award damages including calculating any royalty that would have been paid or damag - es for licence fees lost. Courts also have regard to the flagrancy of the infringement. In the event the infringement is caused by a direct competitor, there is also a route for an account of profits to be done, ie, the loss in sales that the owner of the trade mark/copyright suf - fered and the profits gained by the competitor. Under the CA 1987, statutory damages for an infringement, as stated under Section 37 of the CA 1987 would be no more than MYR25,000 for each infringing work and not more than MYR500,000 in total.
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