Counterfeiting is a growing problem in Malaysia with more and more individuals getting involved in this highly lucrative industry. To combat infringement and counterfeiting activities in the country, the government has introduced new legislation and tightened its enforcement measures to ensure compliance with its laws. Whether an IP rights owner decides to seek redress through a civil or criminal action against the offending party depends on the type of relief the IP owner seeks.
The holder of a registered trade mark has a better legal standing to enforce his rights in a civil infringement action under the Trade Marks Act 1976. This law does not protect unregistered trade mark rights such as trade dress or the get-up of a product. Instead, these are protected by the tort of passing off. An action under the common law of passing off is more complex as strong convincing evidence is required to satisfy the elements of a passing off action.
In a civil action, there are various remedies available such as interim injunctions, an award for damages, the surrender and destruction of offending goods and an award for costs to the successful party. The Trade Marks Act 1976 has been amended and now contains provisions for border measures prohibiting counterfeit trade mark goods from being imported into Malaysia unless the goods are in transit.
The most common method for initiating criminal proceedings is under the Trade Descriptions Act 1972, which deals with false trade descriptions of any kind on goods or services. The owner of a registered or unregistered trade mark can initiate an action by applying for a Trade Description Order in the High Court. With the Trade Description Order, the Enforcement Division will raid the premises where the counterfeit products are being manufactured, stored or sold and criminal proceedings will follow against the offending parties.
Where the get up of the product - such as the packaging and product inserts - are considered as artistic works or literary works, it is also possible to institute a copyright infringement action. The Copyright (Amendment) Act 2003 also seeks to increase the punishment for criminal offences relating to copyright infringement.
Due to the escalating use of optical discs in the reproduction of copyrighted works, the government passed the Optical Discs Act 2000 to help curb piracy. The Optical Discs Act 2000 establishes a licensing and regulatory framework for all processes or activities that are involved in the manufacture of optical discs. The Trade Description (Original Label) Order 2002 makes it compulsory for optical disc products and devices on which data may be stored in digital form to be affixed with anti-counterfeiting Original Label holograms.
Even with the various enforcement provisions and laws, there are still many constraints and problems faced by the intellectual property owner, the enforcement agencies and the courts in their efforts to curb the counterfeiting of goods in Malaysia. It is hoped that the launch of joint-task forces comprising of the enforcement division, customs, police and industry to carry out enforcement activities will prove to be successful.
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Jyeshta Mahendran
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