Cross-Border Intellectual Property Enforcement in Malaysia

As businesses increasingly expand beyond domestic markets, intellectual property (“IP”) rights are becoming more vulnerable to cross-border infringement. The rise of global trade, e-commerce platforms, and complex supply chains has facilitated the proliferation of counterfeit goods and unauthorized distribution channels, posing significant risks to brand owners and rights holders alike. To address these challenges, Malaysia has established a multi-layered enforcement framework comprising civil, criminal, administrative, and border control measures. This article delves into these enforcement mechanisms and examines how they can be utilised to protect IP rights against cross-border infringement.

Civil Enforcement Mechanisms

In Malaysia, trademark proprietors may initiate civil proceedings before the High Court of Malaya to enforce their IP rights and restrain infringement. If infringement occurs, then pursuant to Sections 56, 58, 59, and 60 of the Trademarks Act 2019, the infringer may face various civil legal consequences, including but not limited to the following:

·      Damages or an account of profits;

·      An injunction to restrain further importation and sale;

·      An order for delivery up and destruction of infringing goods in his possession, custody or control; and/or

·      Court’s cost

Criminal Enforcement Mechanisms

Criminal liability may also arise under Sections 99 to 102 of the Trademarks Act 2019. The current practice is that the registered trademark owner may lodge complaint to the Enforcement Division of Ministry of Domestic Trade and Cost of Living (“MDTCL”) which requires the registered trademark owner conducts surveillance and gather actual information or evidence prior to lodging a complaint. In circumstances of an enforcement against an infringing trademark that is confusingly similar but not identical with the registered trademark, registered trademark owner is now required to apply to the Registrar of Trade Marks for a Verification Order which may be used by MDTCL to act against any offender and as prima facie evidence in court. Once the registered trademark owner has lodged a complaint with MDTCL, and before any raid action is taken, the Enforcement Division of MDTCL will conduct its own intelligence gathering, in addition to reviewing the information and documents provided by the trademark owner, to determine whether a raid is justified. After the raid has been carried out and the infringing goods have been seized, the Attorney General will decide whether to pursue criminal proceedings against the alleged infringer.

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Customs and Border Measures

Malaysia provides border measures under Section 82 of the Trademarks Act 2019, which play a key role in restricting the importation of counterfeit trademark goods. Under this provision, if the brand owner or the authorised licensee anticipates there is an importation of counterfeit goods to Malaysia, they can file an official application to prohibit the importation of counterfeit goods with the Malaysian Intellectual Property Office (“MyIPO”).

However, please take note that the application should include the following:

·      ​Detailed information about the shipment, such as the importer’s details, vehicle/ship registration number, anticipated arrival ​location of the goods and expected date of arrival;

·      Description of the infringing good

·      Images of genuine and suspected infringing goods; and

·      Any other relevant information to assist identification

If the application is approved, the prohibition will remain in effect for a period of 60 days.

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Basket of Brands (“BOB”)

In 2011, the Ministry of Domestic Trade and Cost of Living launched an initiative called the “Basket of Brand”. This initiative allows brand owners to proactively protect their trademarks and combat counterfeiting by submitting a designated form to the Ministry. Once a brand is enrolled in the Basket of Brand, the Ministry monitors goods for any potential infringement. This proactive approach helps to prevent IP violations without requiring an official complaint. In return, the Ministry requires timely verification from the brand owner regarding any seized goods. Once the brand is included in the BOB, protection will be valid for two (2) years, and your client may choose to renew it every two (2) years.

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Online and Digital Cross-Border Enforcement

The growth of e-commerce has led to increased cross-border infringement via online platforms, requiring rights holders to adopt digital enforcement strategies. Most major e-commerce platforms have established their own Intellectual Property Protection on brand protection portals, which allow trademark proprietor to submit takedown request against the infringing listings.

If you have any queries on the above, please feel free to contact the authors of the article, Henry Phoon (henryphoon@chphoon.com) or Ashlyn Foo (ashlynfoo@chphoon.com)

** This article is intended for general information of the clients of our Firm. It should not be regarded as legal professional advice. If you require advice based on specific facts, please feel free to contact us.

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