• (230) 4278861, 4260399

Enforcement of IPRs in Malaysia

Malaysia

Enforcement of IPRs
Unchecked cyberspace is one of the main reasons causes of counterfeiting and piracy in Malaysia.
Alcohol, food items, and clothes, are the goods that most often face counterfeiting and piracy in Malaysia,
Yes
They are as follows:
  • The Copyright Act 1987
  • The Trade Marks Act 1976
  • The Industrial Designs Act 1996
  • The Patents Act 1983
Copyright, trademarks, trade secrets, patents, and industrial designs are the different types of IPRs protected by IPR enforcement in Malaysia.
The following may be needed at any point of the enforcement proceeding:
  • Complaint letter;
  • Investigation report to support the complaint;
  • Copy of registration certificate or declaration of ownership for copyright; and
  • Letter of authorization/Power of Attorney.
Irrespective of the enforcement route you take, you will need to prepare and collect evidence to show that you are the owner of the IPR in question in Malaysia (for instance, you would require providing your Malaysian trademark registration certificate), and prove that the IPR has been infringed by a third party.
It is pertinent to establish use in Malaysia. It is important to note that apart from having a physical presence in Malaysia, the sale of products over the internet in Malaysia can also be deemed as use of the trademark. Establishing presence can always work in favour of the rights holder.
Yes
A) Government Authorities -
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes
Yes
Yes
A) Injunctions - Yes
B) Monetary Compensation - Yes
C) Raids - Yes
D) Seizures - Yes
E) Destruction - Yes
Other civil remedies include:
  • A share of the infringer’s profits;
  • A declaration of infringement by the defendant;
  • Partial costs; and
  • Punitive damages (known as aggravated and exemplary damages) in appropriate cases.
An infringement action trial is usually heard at the High Court within 09 months from the date of application.
Ex parte interim injunction applications (together with certificates of urgency) may be heard within 01 day to 01 week following the application date, while inter partes interim injunction applications may be heard within 01 to 03 months following the application date.
No
Yes
Yes
A) Responsible Authority - Session Courts
B) Imprisonment Term - 03 years for first offense and 05 years for subsequent offence)
C) Monetary Fine - f MYR250, 000 (approx. US$ 65,000) for first offence and MYR500, 000 for second offence (approx. US$ 130,000)
No
No
Alternative dispute resolution is available to resolve trademark cases. It is common for a trial judge to refer parties to mediation before another trial. The benefits of mediation are that parties can settle the matter without going to trial, which is more cost-effective. However, in the event that mediation is unsuccessful, the matter will proceed to trial.
No
Yes
Other remedies available under border control measures (customs) in Malaysia include seizure of goods.
The applicant must bear the costs of customs intervention during enforcement.
If an IP rights holder abuses the enforcement measures in Custom Recordal of IPRs then the goods are released from detention.
ADR/Court proceedings
There may be a substantial retention fee that is required to be paid at the time of seizing goods through the customs route.