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1. What are the main laws regulating IP in Malaysia?

Malaysian law relating to intellectual property is mainly contained in statutes and common law. There are national legislation for copyright, patents, industrial designs, geographical indications, layout-designs, optical discs and trademarks. Malaysia also recognizes the common law principles of passing off and the protection of confidential information / trade secrets.

2. Which international IP agreements is Malaysia a party to? Are there any notable omissions?

Malaysia is a party to most well-known international IP agreements, including:

(a) Paris Convention for the Protection of Industrial Property;

(b) Patent Cooperation Treaty;

(c) Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS Agreement");

(d) World Intellectual Property Organisation ("WIPO") Copyright Treaty;

(e) WIPO Performances and Phonograms Treaty;

(f) Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;

(g) Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks;

(h) Berne Convention for the Protection of Literary and Artistic Works; and

(i) Convention Establishing the World Intellectual Property Organisation.

Further, Malaysia is committed to acceding to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks ("Madrid Protocol").

Notably, Malaysia is not a party to the Hague Agreement Concerning the International Registration of Industrial Designs.

3. Have there been any recent significant changes to the law?

To date, there have not been any significant changes in terms of IP legislation. Nevertheless, there has been a recent breakthrough with respect to remedies arising from a breach of confidential information and/or trade secrets. In Juris Technologies Sdn. Bhd. and Natsoft (M) Sdn. Bhd. v Foo Tiang Sin & 5 Ors, the former employees of the plaintiff company set up a competing business while they were still employees and utilized the plaintiff company's confidential information to build a suite of software. When the competing business was ready, they resigned and competed with the plaintiff company. In that case, the judge held that:

  • Employees would still be working 'in the course of employment' even if any activity was conducted outside office hours and outside the office. This is an important development in view of current innovative working arrangement of employees (part time, working from home etc.) and will have an impact across actions in tort, IP and employment.
  • While not all employees are in a fiduciary position (in addition to having a duty of fidelity), employees (not just directors) who are trusted with greater responsibility owe a higher duty as a fiduciary. Flowing from there, employers are entitled to the full range of remedies against any such rogue employees including a claim for secret profit, tracing, an account of any sums made and others.
  • In view of the foregoing, the judge has granted remedies as follows:
  • a judicial assignment to the ex-employer of all software which the ex-employees developed (whether or not they infringe the ex-employer's software) while they were employed with the ex-employer. This is the first time such a judicial assignment of copyright is ordered in Malaysia.
  • a 'springboard injunction' which negates any advantage the ex-employees had when they unlawfully took confidential information and software of their ex-employer. The springboard injunction essentially restrains the ex-employers from being involved in a similar business as the ex-employer for a few years. This is also one of the first time in Malaysia where a springboard injunction was granted.
  • exemplary, punitive and additional damages against the ex-employers, to punish and send the 'right' message to the industry, taking cognizant of the fact that in a software industry, IP assets are their main assets and in view of the ease of copying and transferring information and software. This is over and above the grant of damages and an account of profits ordered and permanent injunction granted.

4. Are there any proposals/plans for legal changes? Or treaty accessions?

Malaysia is committed to accede to the Madrid Protocol. It is anticipated that a new Trade Mark Bill will be tabled in 2018 for Malaysia to ratify its obligations under the Madrid Protocol. The proposed changes to the Trade Marks Act 1976 would include protection for 3D marks, protection for non-traditional marks such as sound, smell and colours, and multi-class applications as well as simultaneous local and global filing.

5. What is the body responsible for granting IP rights and how is it structured?

The Intellectual Property Corporation of Malaysia ("MyIPO") is responsible for the provision of IP rights registration services and the administration of registries/offices, i.e. Registry of Trademarks, Patent Registration Office, Industrial Designs Registration Office and Central Geographical Indications Office. Notwithstanding that there is no registration system for copyright, copyright owners may lodge a voluntary notification with the MyIPO. The certificate of notification issued by MyIPO shall constitute prima facie evidence of the particulars relating to the copyright and is admissible in all courts in Malaysia.

The administration of MyIPO is headed by a Director General who is assisted by two Deputy Director Generals. The MyIPO is made up of several divisions and units, including Patent Division, Trade Mark Division, Industrial Design Division, Geographical Indications Division, Copyright and Layout-Designs of Integrated Circuits Division, Planning and International Relation Division, Management Services Division, Information Technology Division, Corporate Communication Division, Legal Advisory Unit, Internal Audit Unit, Corporation Secretary, Intellectual Property Training Centre, MyIPO Southern Office (Johor Bahru), MyIPO East Coast Office (Kuantan), MyIPO Northern Office (Penang), MyIPO Malacca Office, Sabah Branch and Sarawak Branch.

6. What is the procedure for obtaining a trade mark? Are there any notable differences compared to other jurisdictions?

Firstly, a registration application accompanied with a statutory declaration will need to be submitted to MyIPO. MyIPO will review the application and conduct formality checks to ensure compliance with statutory requirements. Upon having ensured compliance, MyIPO will conduct an examination on registrability and a search for prior marks.

If the application is rejected by the Registrar, the applicant will need to submit a reply in writing within 2 months, containing amendments, modifications etc. If the Registrar upholds its objection to the application, the applicant may apply for a hearing within 2 months.

Once an application is accepted, it will be advertised in the Government Gazette and any interested third parties may oppose the registration within 2 months. If there is no opposition, or the opposition is rejected, a certificate of registration will be issued by MyIPO. This whole process may take more than 1 year. On the other hand, if there is an opposition, the mark will not be registered until the opposition has been resolved.

There is an option to apply for expedited examination of the proposed mark on special grounds, such as national or public interest, pending infringement proceedings, and where the application is a pre-requisite for certain monetary benefits or schemes. While it is possible for a certificate to be obtained within 1 year via expedited examination, higher fees are applicable.

The trade mark registration process in Malaysia is similar to the registration process in most jurisdictions, notably Singapore, the UK and the US.

7. Which courts have jurisdiction in IP cases in Malaysia, at first instance and appeal? How are they structured ?

The Intellectual Property Court was established on 17 July 2007 to focus solely on IP disputes. The Government of Malaysia designated fifteen (15) Sessions Courts with criminal jurisdictions and six (6) High Courts with both civil and appellate jurisdictions to deal exclusively with intellectual property cases. The six (6) states in Malaysia with the most number of intellectual property cases would each have one High Court being assigned to exclusively deal with intellectual property cases comprising of the prosecution of criminal offenses under the Trade Descriptions Act, Copyright Act, Optical Discs Act, and the Patents Act. However, the judges sitting in the intellectual property courts are not required to have legal expertise in the area of intellectual property.

  • The hierarchy of the Malaysian judicial system consists of:
  • the Subordinate Courts (Magistrates and Sessions Court);
  • the High Court of Malaysia;
  • the Court of Appeal; and
  • the Federal Court.

It is noteworthy to highlight that there is no jury system in Malaysia. That said, proceedings in the High Court will be heard and determined by a single judge. Proceedings in the Court of Appeal will usually be heard and determined by a panel of three judges. In relation to the Federal Court, an application for leave to appeal to the Federal Court will usually be heard and disposed off by a panel of three judges, while the appeal proper will usually be heard by a panel of five judges.

The applicable rules of evidence in respect of court proceedings are set out in the Evidence Act 1950, which is almost in pari materia with the Indian Evidence Act 1872. Generally, Malaysian Courts adopt the common law position with regard to evidence.

8. How common is IP litigation? How many trade mark cases in a typical year?

IP litigation is fairly common. Based on publicly available legal databases, the average number of trademark cases from 2013 - 2017 is 90 cases per year, ranging from approximately 50 cases in 2013 up to 136 cases in 2016.

9. What have been the most significant TM cases in recent years, and why?

No Case Facts Decision
1 Chanel v Melwani2 International Sdn Bhd & Ors and Other Cases [2017] 6 CLJ 567 The plantiffs, Chanel, were the proprietors of registered trade marks for various goods. The first defendant was a company. Both the second and third defendants were directors and owners of the first defendant. The first defendant sold goods bearing Chanel's trademark even though they were not authorized to do so. This case was significant because the courts had to decide:

(i) Whether the court should pierce the first defendant's corporate veil; and

(ii) whether an individual may be personally liable for a company's infringement of a registered trade mark under s. 38(1)(a) of the Trade Marks Act 1976.
An individual may be personally liable for a company's infringement of a registered trade mark under Section 38 of the TMA. But there existed special circumstances in this case that allowed for the corporate veil to be pierced:

(1) The third defendant had paid the hefty fine for the first defendant, although there was no obligation for him to do so. This indicated that the third defendant was the controller and the directing mind and will of the company, because no reasonable individual would have paid such a fine.

(2) The third defendant owned a substantial amount of shares, and thus had a substantial financial interest, in the first defendant, and could not thus claim ignorance of the first defendant's infringement. The first defendant's corporate personality was considered to be abused by the third defendant.
2 Doretti Resources Sdn Bhd v Fitters Marketing Sdn Bhd & Ors and Another Case [2017] 1 LNS 738 The plaintiff was the registered proprietor of the trade mark "PYRO", and had supplied PYRO products to the first and second defendants, who in turn sold them to the public. The plaintiff discovered that the first and second defendants sold counterfeit PYRO products to the public and that these products were supplied by the third, fourth and fifth defendants. The issue here was whether the fourth and fifth defendants could strike out the plaintiff's claim on the basis that they did not commit trade mark infringement because they did not sell counterfeit goods to members of the public, but only to the first and second defendants. The strike out application was successful because they did not sell the counterfeit goods to members of the public but only to retailers (the first and second defendants). In essence, there would only be trademark infringement if the infringing goods were sold to consumers or the public.

The defence of prior use under Section 40(1)(c) of the TMA is to prevail over all other provisions in the TMA, including trade mark infringement under Section 38(1)(a) of the TMA.
3 Kraft Foods Schweiz Holding GmbH v Pendaftar Cap Dagangan [2016] MLJU 402 The plaintiff applied to register the trade mark, a 3D prism-shape in reddish-brown colour, described as "Toblerone Chocolate Teeth 3D in colour" for goods in Class 30 ("the proposed trade mark"). The plaintiff’s application was objected to by the Registrar on the ground that the proposed trade mark is not distinctive within the meaning of section 10(1)(e) of the TMA because it was not capable of distinguishing the plaintiff’s goods in the course of trade. The plaintiff’s trade mark agent appeared before the Registrar to appeal against the objection but the application was eventually refused by the Registrar on ground that, inter alia, the proposed trade mark did not fall within the definitions of "mark" and "trade mark" under section 3(1) of the TMA. The plaintiff upon receiving the written grounds for the refusal, applied to the Registrar for an extension of time to appeal to the High Court against the Registrar’s refusal and subsequently filed the appeal 7 days after the expiry of the Registrar’s extension. The High Court found that the appeal was filed out of time and dismissed the appeal. Nevertheless, the High Court went on to consider whether a 3D or shape mark could qualify as a "mark" and a "trade mark" under Section 3(1) of the TMA. The Court stated in obiter, that a 3D mark or shape mark fell within the definition of "mark" in Section 3(1) of the TMA. However, the Court concluded that the proposed trade mark was not a "trade mark" because it failed to indicate a connection in the course of trade between the plaintiff’s goods and the plaintiff. The plaintiff's mark also lacked both inherent distinctiveness and factual distinctiveness. Thus, the proposed trade mark was not registrable.

Have there been significant rulings in any other areas, eg copyright?

No Case Facts Decision
1 Juris Technologies Sdn Bhd and Natsoft (M) Sdn Bhd v Foo Tiang Sin & 5 Ors The Defendants had set up a competing business while they were still employees of the Plaintiff. While under employment, they utilised confidential information from the Plaintiffs' software and built a new suite of competing computer software programmes. When the software was ready and the competing business was growing, they resigned in stages and began competing with the Plaintiffs. In this landmark case, the High Court ruled in favour of the Plaintiffs on 6 September 2017 and laid down several important precedents:

• The judge held that in current times, employees could still be considered to be working "in the course of employment" even if any activity was conducted outside of office hours and outside the office premises.

• While not all employees are in a fiduciary position, employees who are trusted with greater responsibility owe a higher duty as a fiduciary.

• Consequently, the judge directed a judicial assignment to the Plaintiffs of all software which the Defendants developed while they were employed with the Plaintiff. This was the first time such a judicial assignment of copyright had been ordered in Malaysia.

• The judge also granted a springboard injunction which essentially restrained the Defendants from being involved in a similar business as their employer for a few years. This was to take away the advantage gained when the Defendants unlawfully took confidential information in the form of source codes belonging to the Plaintiffs to develop a competing software.

• The judge took cognizance of the fact that in the software industry, IP assets are the main assets of a company. In view of the ease of copying and transferring of information and software, the judge granted exemplary, aggravated and additional damages against the Defendant, to punish and send the "right" message to the industry. This was over and above the grant of damages, account of profits ordered and permanent injunction granted. This has been one of the most aggressive messages sent by the IP Court.
2 Merck Sharp & Dohme Corp & Anor v Hovid BHD [2017] MLJU 77 This was a patent infringement case in which the Plaintiffs claimed that the Defendant had infringed the Merck Patent by selling Alendronate tablets. The Defendant counterclaimed to invalidate the Merck Patent on grounds that the patent is non-patentable, not novel, lacked inventive step and not industrially applicable pursuant to Sections 13(1)(d), 14, 15 and 16 of the Patents Act 1983 ("PA"). However, the Plaintiff argued that the Merck Patent constituted a Swiss-type claim which is not a method of medical treatment prohibited by Section 13(1)(d) of the PA. A Swiss-type claim generally refers to a "second or further medical use" of a known substance or composition used for a medical treatment. It also covers purpose limited process claims where a substance is used for the manufacture of a medicament for a specified medical use. This is the first case whereby a court has clarified that Swiss-type medical use claims are allowed in Malaysia. The High Court held that:

• Section 14(4) of the PA allows the patentability of the "use" of a Treatment Method. Accordingly, the Merck Patent is not a Treatment Method which is prohibited by Section 13(1)(d) of the PA. Instead, the Merck Patent is a "use" of a Treatment Method, a Swiss-type Claim, which is patentable according to Section 14(4) of the PA.

• As Articles 53(c) and 54(4) of the Convention on the Grant of European Patents are identical or similar to Sections 13(1)(d) and 14(4) of the PA, the court may rely on the decisions of the European Patent Office's Board of Appeal and Enlarged Board of Appeal in the interpretation of the relevant Sections of the Act.

• The Court decided that Claim 1 of the patent was invalid for lack of inventive step. Since all the remaining twenty one claims were dependent on Claim 1, all the dependent claims were invalidated.

• Notably, the foreign expert witness in this case gave evidence and was cross-examined through Skype.

Are there any decisions in other areas of law (eg competition, regulatory) that have had or are likely to have an impact on IP rights?

Although there are currently no decisions in other areas of law that have had a direct impact on IP rights, it is anticipated that competition law may potentially have an indirect impact on IP rights in Malaysia.

Malaysian competition law is mainly governed by the Malaysian Competition Act 2010 ("CA"), which does not contain any exceptions in relation to IP rights. There are currently no decisions, guidelines or directions from Malaysian authorities which shed light on how the CA would apply to issues relating to IP rights. In particular, the following potential issues are worth highlighting:

  • The CA prohibits any anti-competitive horizontal or vertical agreement which has the object or effect of significantly preventing restricting or distorting competition in any market for goods or services. On a strict interpretation, IP licence agreements, technology transfer agreements and other IP pooling arrangements, may arguably constitute vertical agreements which are prohibited.
  • the CA also prohibits any conduct which amounts to an abuse of a dominant position. IP agreements which include provisions such as territorial delimitations, product delimitations and no-challenge clauses in trade mark delimitation agreements, which essentially allows the owner to gain dominant position, may be considered as anti-competitive agreements, which is prohibited under the CA.

In light of the foregoing, the Malaysian Competition Commission ("MyCC") has stated that a Guideline to specifically address Intellectual Property Rights will be issued, though no issuance date has been promised.

12. Are there any financial/accounting measures in Malaysia that are aimed at or relevant to IP owners/licensees (eg patent box-style tax rules or other IP-related incentives)?

The following IP-related incentives are applicable:

  • The Income Tax (Deduction for Expenditure on Registration of Patent and Trade Mark) Rules 2009 provides that certain companies and enterprises may be eligible to claim tax deduction for fees made to register patents or trade marks under the Patents Act 1983 and the Trade Marks Act 1976 respectively.
  • Malaysian Government launched the Intellectual Property Financing Scheme ("IPFS") in line with its 'IP Valuation' initiative which aims to create a better understanding of monetizing IP rights through IP valuation. The IPFS is a fund administered by Malaysia Debt Ventures Berhad ("MDV") which provides eligible technology-based small and medium enterprises with financing, using their IP as collateral. The IP must have been approved by MyIPO and valued by an approved valuer, usually via Malaysian IP Valuation Model ("IPVM") - a valuation model to achieve the Government's goal to enhance the credibility and greater transparency around IP, making it more attractive as a financial tool to the financial institutions.

13. How is the law enforcement against counterfeit goods in Malaysia?

The legal framework for enforcement against counterfeit goods is quite well established in Malaysia. Brand owners may enforce IP rights through civil and/or criminal action as follows:

Civil Measures

  • A brand owner may issue a cease and desist letter to the seller(s)/manufacturer(s) of counterfeits, on the basis that the seller is acting in breach of the owner's rights.
  • A registered trade mark owner may initiate a court action against the infringer on the basis of IP rights infringement and/or the tort of passing off.
  • Having conducted its own investigation, a brand owner may lodge a complain with the MDTCC to carry out a raid action on the infringer(s). The MDTCC enforcement officers will conduct the raid action, seize the counterfeit products and conduct further post-raid investigation before forwarding its investigation report to the Deputy Public Prosecutor for a decision as to whether the alleged counterfeiters should be charged in Court or be imposed a compound fine. The brand owner may expedite the investigation by participating in their Basket of Brands ("BOB") scheme, under which the participating brand owners' proprietorship will be entered into a separate, distinct database with the MDTCC and require brand owners to execute an undertaking to cooperate in the MDTCC's investigation. Such registered brand owners will be prioritized by the MDTCC.

Criminal Measures

  • The CA empowers the police and the MDTCC to enter any premises where there is reasonable cause to suspect that there are infringing goods or equipment for making such goods, and to seize such goods or equipment with a warrant. Seizures can be effected without a warrant if there are reasonable grounds to believe that the infringing goods or equipment may be destroyed or removed from the premises due to a delay in obtaining a warrant.
  • A registered proprietor of a trademark may lodge a complaint with the MDTCC , which is vested with the power of arrest and search and seizure without a warrant. Following a raid, the ministry may prosecute the suspected counterfeiters on the advice of the attorney general's chambers.

14. What are the emerging digital and technology issues that will likely to have an impact on trade mark laws / IP rights? (AI, etc.)

One of the most significant issues anticipated is the ownership of IP rights in the content or work created by Artificial Intelligence Systems ("AIs"), which are able to create new content due to their ability to self-improve and self-learn.

A pertinent point to note in this regard is the copyright of literary works. As it stands, the current copyright regime in Malaysia provides that copyright in a literary work will be valid for the lifetime of the author plus 50 years after his/her death. However, if the creator of the literary work is an AIs, the validity of the copyright of the said literary work could potentially be perpetual as AIs are inorganic beings and as such, do not have a definite lifespan.

15. What are the border control measures taken by the relevant authorities to prevent the importation of infringing goods or services?

There is no customs recordal system in Malaysia. As such, brand owners must police the market for counterfeit products on their own initiatives.

Technically speaking, the Royal Malaysian Customs Department ("RMCD") may have an ex-officio capacity under section 70O of the TMA to detain the goods suspected to be counterfeits and subsequently contact the MDTCC or the brand owners to attend to the relevant port of entry to conduct a preliminary visual examination on the goods detained. However, the RMCD officers are usually not fully equipped or trained on the intellectual property issues and will usually hesitate to detain the goods without receiving any complaint from the brand owners.

The RMCD may also detain the counterfeit products at the point of entry upon notification by the Registrar of trade marks under section 70D of the TMA. However, such notification will only be made upon receipt of a very specific application from the brand owners, detailing the time and place in which the counterfeit products are expected to be imported for the purpose of trade. These details are difficult to obtain without extensive and expensive investigation.

16. How is unregistered trade mark protected and what is the position taken in Malaysia in regulating unregistered trade mark?

Unregistered trademarks may be protected in Malaysia under the common law principle of passing off. To establish an action for passing off, the plaintiff must establish that:

  • the goods or services he supplies have acquired a certain goodwill and reputation in Malaysia;
  • the actions of the defendant have caused, or in all possibility will cause the ordinary consumers or customers of the plaintiff's goods or business to believe that the goods or business of the defendant are that of the plaintiff, or is in some way associated with the plaintiff; and
  • as a consequence, the plaintiff has suffered or is likely to suffer damage to his trade or business.

17. How are domain names protected and regulated in Malaysia?

In Malaysia, domain names may be protected and regulated in Malaysia by:

  • registration with Malaysian Network Information Centre Berhad ("MYNIC"), the sole administrator for web addresses that end with .my in Malaysia. In particular, domain names with ".my", ".com.my", ".net.my", ".org.my", ".edu.my" and ".gov.my" may be registered by organizations and individuals with MYNIC, whereas applications for ".com.my", ".net.my", ".org.my" and ".name.my" domain names may be submitted through MYNIC's officially appointed partners, called resellers. By way of background, MYNIC is a company limited by guarantee, and an agency under Ministry of Communications and Multimedia Malaysia that is regulated by Malaysian Communication and Multimedia Commission; or
  • initiating a domain name dispute proceeding by filing a complaint pertaining to a third party's registration or use of an identical or similar domain name to the Kuala Lumpur Regional Centre for Arbitration ("KLRCA"), under the MYNIC's Domain Name Dispute Resolution Policy ("MYDRP").The Complainant must be able to establish that the disputed domain name is identical or similar to the trade mark or service mark to which he has the rights and that the Respondent used the domain name in bad faith. If the complaint is successful, the Complainant may request for a transfer of the disputed domain name to him or a deletion of the registration of the said domain name. However, kindly note that the Complainant is not entitled to pecuniary damages. One may prove that their registration and/or use of the domain name was not in bad faith by establishing that they have rights and legitimate interests in the domain name. This can be evidenced by, for example, being commonly known by the Domain Name even though you have acquired no trade mark or service mark rights in the same.

18. On what grounds can a trade mark registration be refused?

In Malaysia, trade mark registration may be refused on the following grounds:

Absolute grounds for refusal

(a) if the use of which is likely to deceive or cause confusion to the public or would be contrary to law;

(b) if it contains or comprises any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law;

(c) if it contains a matter which in the opinion of the Registrar is or might be prejudicial to the interest or security of the nation;

(d) if it is identical with or so nearly resembles a mark which is well known in Malaysia for the same goods or services of another proprietor;

(e) if it is well known and registered in Malaysia for goods or services not the same as to those in respect of which registration is applied for: Provided that the use of the mark in relation to those goods or services would indicate a connection between those goods or services and the proprietor of the well known mark, and the interests of the proprietor of the well known mark are likely to be damaged by such use;

(f) if it contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the mark for such goods in Malaysia is of such a nature as to mislead the public as to the true place of origin of the goods; or

(g) if it is a mark for wines which contains or consists of a geographical indication identifying wines, or is a mark for spirits which contains or consists of a geographical indication identifying spirits, not originating in the place indicated by the geographical indication in question.

Relative grounds for refusal

(h) the mark is identical with a trade mark belonging to a different proprietor and entered in the Register in respect of the same goods or description of goods or in respect of services that are closely related to those goods;

(i) the mark so nearly resembles such a trade mark as is likely to deceive or cause confusion;

(j) the mark is identical with a trade mark belonging to a different proprietor and entered in the Register in respect of the same services or description of services or in respect of goods that are closely related to those services; or

(k) separate applications are made by different applications to be registered as proprietors respectively of trade marks which are identical or so nearly resembling each other as are likely to deceive or cause confusion.

19. On what grounds can a trade mark registration be opposed?

A trade mark may be opposed by any person on any the following grounds:

(a) all grounds mentioned in Question 18 above; or

(b) the trade mark that is being applied for is identical or confusingly similar to an unregistered or registered trade mark belonging to the person opposing.

20. Does trade mark infringement attract criminal liability?

Yes. Trade mark infringement may attract criminal liability under the Trade Description Act 2011 ("TDA 2011"). Section 8 of the TDA 2011 prohibits false trade description whereby an identical registered trade mark or a similar mark (where a trade description order from the High Court is obtained), is used without authorization from the registered trade mark proprietor. Any person who applies a false trade description to any goods, or supplies, offers, or exposes for supply goods, as if the goods were subject to any rights relating to a registered trade mark, commits an offence and upon conviction, may be liable:

(a) to a fine up to RM 15,000 (approx. USD 3,800) for each goods bearing the false trade description, and for a second or subsequent offence, to a fine up to RM 30,000 (approx. USD 7,600) for each goods bearing the false trade description, if such person is a body corporate; or

(b) to a fine up to RM 10,000 (approx. USD 2,530) for each goods bearing the false trade description and/or to imprisonment for a term up to 3 years, and for a second or subsequent offence, to a fine up to RM 20,000 (appox. USD 5,060) for each goods bearing the false trade description, and/or to imprisonment for a term up to 5 years, if such person is not a body corporate.


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