Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

The High Court has jurisdiction and power to hear and determine trademark disputes (Bank Kerjasama Rakyat Malaysia Bhd v Koperasi Amanah Pelaburan Bhd (Kuala Lumpur High Court Suit WA-22IP-47-11/2017)).

Civil action can be taken against trademark infringement. A registered mark is deemed to have been infringed when another party uses a mark which:

  • is identical to a registered mark; or
  • is so similar to a registered mark that it is likely to deceive or cause confusion (Section 38 of the Trademarks Act 1976).

Further, it is an offence under the Trade Descriptions Act 2011 to use a false trade description relating to a trademark. The public prosecutor has the discretion to determine whether prosecution will be undertaken.

Under the Trademarks Act 2019, a party infringes a registered mark if it uses a sign in the course of trade which is:

  • identical with a registered trademark for identical goods or services;
  • identical with a registered trademark  for  similar goods or services and results in a likelihood of confusion; or
  • similar with a registered trademark for identical goods or services and results in a likelihood of confusion (Section 54 of the Trademarks Act 2019).

Under the Trademarks Act 2019 it is an offence:

  • to counterfeit a registered trademark;
  • to falsely apply a registered trademark to goods or services which are not genuine goods of the registered proprietor; or
  • to knowingly make articles specifically designed as copies of a registered trademark or sign (Sections 99, 100 and 101 of the Trademarks Act 2019).
Procedural format and timing

What is the format of the infringement proceeding?

There is a specialised Intellectual Property High Court at the Kuala Lumpur High Court which hears all IP disputes.

Both parties have the right to present facts and evidence before the court. Documentary evidence and oral testimonies from witnesses and experts (in relevant cases) are important for the trial court to determine the matter at hand.

A trademark infringement action will usually go to trial and be settled nine months after the filing date.

A discovery process is available and provided for by the Rules of Court 2012.

Discovery applications can be made after the close of pleadings before a trial starts. There are three stages in which a discovery application applies:

  • the disclosure of documents;
  • the inspection of documents; and
  • the production of documents.

A trade description order can be applied on an ex parte basis and where obtained it must declare that an infringing mark is a false trade description for the goods or services that it applies to, as specified in the order. The proprietor can lodge a request with the Ministry of Domestic Trade, Co-operatives and Consumerism to conduct a raid as appropriate.

Burden of proof

What is the burden of proof to establish infringement or dilution?

Plaintiffs bear the burden of proof to establish trademark infringement on a balance of probabilities.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

The owner of a registered mark may initiate action against an infringer under Section 38 of the Trademarks Act 1976.

A registered user or licensee can also be a party to an infringement action and institute proceedings in its own name where the registered owner fails to commence proceedings for infringement within two months from being asked to do so by the registered user (Section 51(1) of the Trademarks Act 1976 and Section 70 of the Trademarks Act 2019). In this case, the registered owner will be a defendant in the proceedings (Section 51(2) of the Trademarks Act 1976).

A rights holder may also lodge a complaint with the relevant authority, which may prosecute the infringer as appropriate.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

A trademark owner may apply to the registrar of trademarks to prohibit the import of counterfeit goods into Malaysia for resale.

On approval, a customs officer will be appointed by the registrar to seize and detain goods within 60 days from the date of approval.

After the goods have been seized, the trademark owner must begin an infringement action and obtain a court order to prevent the goods from being released. Where successful, the seized goods will be destroyed of as per the court’s directions. (Please see ‘The benefits of registration’.)

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

A discovery process is available and provided under the Rules of Court 2012. (Please see ‘Trademark enforcement proceedings’.)

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

An infringement action trial will usually be heard at the High Court within nine months from the date of application.

Ex parte interim injunction applications (together with certificates of urgency) may be heard within one day to one week following the application date, while inter partes interim injunction applications may be heard within one to three months following the application date.

The High Court has jurisdiction to hear trademark matters and there is a right of appeal to the Court of Appeal. Thereafter, appeals can be filed with the Federal Court (Section  96(a) of the Courts of Judicature Act 1964). Leave to appeal to the Federal Court will be allowed if the following criteria apply:

  • The appeal is against a Court of Appeal judgment or order for any civil cause or matter decided by the High Court in the exercise of its original jurisdiction.
  • The case involves a question of general principle decided for the first time.
  • The case involves a question or questions of importance and a Federal Court decision would be to the public advantage.
Limitation period

What is the limitation period for filing an infringement action?

The limitation period is six years.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Costs are not fixed and depend on the type and manner of the enforcement action, which vary depending on the nature, extent and complexity of each case.

In general, the losing party pays costs to the winning party. The courts have discretion to award costs, including the quantum.

Appeals

What avenues of appeal are available?

Please see ‘Discovey’.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

Trademarks Act 1976

The defences against infringement under the Trademarks Act 1976 include the following:

  • The trademark has been used in good faith and is the name of the user’s (or their predecessor’s) business.
  • The trademark has been used in good faith and is a description of the character or quality of the user’s goods or services, where the description does not refer to the trademark of another trader.
  • The trademark owner (or its predecessor) has continuously used the mark from a date before the registered mark was used by its registered owner or user (or predecessors), or before the mark’s registration, whichever is earlier.
  • The registered owner or user has used the trademark on its goods in the course of trade and has not subsequently removed it.
  • The defendant uses the mark for goods or services where the registered owner or user has expressly or implicitly given consent to do so.
  • The trademark has been used by a person for goods or services adapted to form part of, or to be accessory to, other goods or services for which the trademark has been or may be used without infringement, provided that such use is reasonably necessary to indicate that the goods or services have been adapted.
  • The registered trademark is used by concurrent owners (Section 40 of the Trademarks Act 1976).

Trademarks Act 2019

Defences for the following marks will be available under the Trademarks Act 2019 when it comes into force:

  • A mark (registered in good faith) which is the name of the alleged infringer or its place of business (or that of its predecessor).
  • A mark registered in good faith to indicate the type, quality, quantity and time of production of goods or services.
  • A mark registered in good faith to indicate the intended purpose of goods and services, including accessories or spare parts, where such use complies with honest practices in industry or commercial matters. 
  • Marks used for non-commercial purposes.
  • Marks used in news reporting.
  • Marks used with the proprietor’s or licensee’s express or implicit consent.
  • Signs which are registered trademarks.
Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

Remedies for trademark owners include:

  • injunctions;
  • the consignment or destruction of the offending mark;
  • damages;
  • 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.

For remedies under the Trademarks Act 2019 please see ‘The benefits of registration’.

Interlocutory injunctions are available, but plaintiffs must establish that:

  • there are bona fide serious issues to be tried;
  • the balance of convenience favours granting the interlocutory injunction (ie, the plaintiff would suffer greater injustice if relief were withheld); or
  • damages are not an adequate remedy (ie, awarding financial compensation is an inadequate remedy in the event that the plaintiff successfully establishes its claim at trial (Keet Gerald Francis Noel John v Mohd Noor bin Abdullah Ors [1995] 1 MLJ 193)).
ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

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.

Law stated date

Correct on

Give the date on which the information above is accurate.

21 August 2019.