Questions about intellectual property in Malaysia: trademarks, copyright, passing off, counterfeit goods and online infringement.
A registered trademark is infringed when someone, in the course of trade and without consent, uses an identical sign for identical goods or services, or an identical or similar sign for similar goods or services in a way likely to confuse the public (Trademarks Act 2019, s.54). Collect evidence of the use and any confusion, check your registration covers the goods, and act promptly.
Yes, possibly. Passing off protects the goodwill in an unregistered name, logo or get-up. You must usually show goodwill among Malaysian customers, a misrepresentation by the other trader that is likely to mislead them, and damage or likely damage. The Trademarks Act 2019 preserves passing-off rights. Collect evidence of sales, advertising and confusion, and act promptly.
Do not ignore the letter, and do not sign undertakings in a hurry. Check whether the sender's mark is registered and for what goods, compare the marks and how you use yours, and look at exceptions such as good-faith use of your own name. Unjustified threats of trademark infringement proceedings can give you a claim under section 61 of the Trademarks Act 2019. Reply in writing before the deadline.
Capture evidence and make test purchases, report the listings through the platform, and identify the sellers. A registered owner can sue for infringement (Trademarks Act 2019, s.56). Where a counterfeit mark is involved, the court can order seizure of suspected goods on an interim application, and the owner can elect damages with profits, an account of profits, or additional damages (s.56(4) and (7)). Delivery up and disposal orders are also available.
Counterfeiting a trademark and selling or importing goods with a falsely applied trademark are offences under the Trademarks Act 2019 (ss.99 to 102). A registered owner can complain to the Assistant Controller (s.112), and enforcement officers have powers to enter premises, seize goods and arrest (ss.119 to 121). Bring proof of registration, evidence of the fakes and a product comparison. A prosecution punishes the offender but does not by itself compensate you, so a civil claim may also be needed.
A registered proprietor (or an authorised licensee) can apply to the Registrar to object to an expected import of infringing goods (Trademarks Act 2019, s.82). If approved, the approval lasts 60 days, security must be deposited (s.83), and authorised officers can seize the identified goods. You must then start an infringement action within the period in the notice, or the goods are released and you may face a compensation claim (ss.85, 88 and 89). Officers may also act on their own initiative (s.93).
Yes, an aggrieved person can apply to court to revoke a registration that has not been used in good faith in Malaysia for three years after the notification of registration, or whose use has been suspended for an uninterrupted three years, without proper reasons (Trademarks Act 2019, s.46). Use resumed in the three months before the application is ignored unless preparations began earlier. Revocation can be partial, and other grounds include the mark becoming a common name or misleading the public.
Possibly. An aggrieved person can apply to court to declare a registration invalid where there was an earlier trademark or an earlier right, such as goodwill protected by passing off (Trademarks Act 2019, s.47(3) with s.24), or where the registration was obtained by fraud or misrepresentation (s.47(6)). Owners of well-known marks have further rights under s.76. An invalid registration is treated as never made, though past and closed transactions are not affected.
Yes, to a degree. A well-known trademark is protected whether or not it is registered in Malaysia and whether or not the owner trades or has goodwill here (Trademarks Act 2019, s.76(1)). The owner can seek an injunction against confusing use on similar goods, and against use on any goods that suggests a connection and damages its interests (s.76(2)). It can also seek invalidation of conflicting registrations. Rights may be lost by five years' knowing acquiescence, unless the other use was in bad faith.
Often, yes. Copyright in an original photo or text arises automatically once it is in material form; registration is not required (Copyright Act 1987, s.7 and voluntary notification under s.26A). Copying the work or a substantial part without licence infringes (s.36). The owner can seek an injunction, damages, an account of profits, or statutory damages of up to RM25,000 per work and RM500,000 in total (s.37(1)). Additional damages may be awarded for flagrant cases.
A copyright owner may notify the service provider in the manner determined by the Minister, requiring removal of or disabled access to the infringing copy, with an undertaking to compensate for loss from compliance (Copyright Act 1987, s.43H(1)). The provider must act within 48 hours (s.43H(2)). The uploader may counter-notify, and the material is restored after at least ten business days unless the owner says it has filed a court action (s.43H(3) and (4)). A knowingly false notice is an offence and creates liability for loss (s.43I).
Copyright vests first in the author (Copyright Act 1987, s.26(1)). But a work made in the course of the author's employment is deemed transferred to the employer, and a work commissioned by someone who is not the author's employer is deemed transferred to the commissioning party, subject to any agreement excluding or limiting the transfer (s.26(2)). Assignments and licences must be in writing (s.27(3)). The contract terms and the facts of how the work was made usually decide the dispute.
Copyright does not cover fair dealing for purposes including research, private study, criticism, review or reporting news, if accompanied by acknowledgement of the title and author (with an exception for some news reporting), nor parody, pastiche or caricature (Copyright Act 1987, s.13(2)(a) and (b)). Courts weigh the purpose and character of the use, the nature of the work, the amount used, and the effect on the market (s.13(2A)). Commercial copying of whole works is hard to defend.
Under the Trademarks Act 2019, "Court" means the High Court, so infringement, revocation, invalidation and well-known mark actions go there (s.3), while a Sessions Court has jurisdiction to try any offence under the Act (s.134). Copyright civil claims are commonly brought in the High Court, and several copyright provisions refer expressly to the High Court. The judiciary has designated particular High Court and Sessions Court benches to hear IP cases; check the current arrangements before filing.
An interim injunction is sought by notice of application with an affidavit under Order 29 of the Rules of Court 2012, and ex parte in urgent cases. An ex parte injunction lapses after 21 days unless revoked or set aside earlier, must be served within seven days, and the court fixes an inter partes hearing within 14 days. In counterfeit trademark cases, the court may also order seizure of suspected goods and supply of documents (Trademarks Act 2019, s.56(4)). Move quickly, because delay weakens the application.
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