IPR Enforcement

IPR in Malaysia

As an Intellectual Property Right (IPR) owner you are legally entitled to the exclusive use and exploitation of your intellectual property (IP). As such, IP owners may enforce their rights against a party who is using or interfering with their IP without their consent. As a full-fledged IP Firm, KASS’ services extend beyond the registration of IP Rights. We assist IP owners in enforcing their rights against any party who misuses their IPRs.

IPR enforcement is a complicated exercise as it may involve a wide range of IP misuse like trademark and industrial design infringement (i.e., counterfeit goods), copyright infringement (photocopy of books, pirated CDs and DVDs), patent infringement, passing off, wrongful registration of IP, and infringement of an artist’s moral rights (i.e., rights of attribution and rights to protect the integrity of his/her work). It may also involve working together with the Customs Authority or the Enforcement Division of the Ministry of Domestic Trade, Co-operative and Consumerism (MDTCC) to stop the infringement of your IPRs.

Here at KASS, we do not believe in a one-size-fits-all approach to IPR enforcement. Upon consultation, our dedicated and experienced team will be able to provide you with comprehensive advice and bespoke strategies to stop the unlawful copying of your IP in an effective and cost efficient way.

How would I know if my IPRs have been misused?

For certain IPRs (i.e., for trademarks, designs or copyright), it is easier to spot an infringement – all you need to do is to look out for items in the market that are identical or very similar to yours. For a more comprehensive survey, you may want to conduct market research to ascertain the nature and the extent of the infringement. Expert help may be needed to establish if a patent had been infringed, especially if the patent in question is a complicated one. For wrongful registration of trademarks, local or international watching services can be utilized to monitor the journals or gazettes of accepted trademarks. The watching services will alert you of any attempt by a third party to register your trademark.

What do I do if my IPRs have been misused?

You first need to understand where you stand legally. Are you in a position to take legal action? And if you are, what legal actions can you take? An adequate level of intellectual property awareness will certainly prove useful in this situation. It should be noted that the legal recourse available to IPR owners are different depending on whether the IPRs are registered. In most cases, it is customary that a letter of demand (LOD) or a cease and desist (C&D) letter is sent to the infringer. Although the terms and the demands of the letter may be different, the essence of it is to demand that the infringer stop using your IP.

If the infringer refuses to budge then you may choose to commence civil proceedings in the courts against him/her to protect your IPR. If there is a need to stop the infringing act immediately, you may apply to the court for an interim injunction to stop the use of your IP while awaiting trial.

Will the government help to stop IPR Infringement?

Yes, you may lodge a complaint at the Enforcement Division of the MDTCC if your registered trademark or your copyright has been infringed by another party in Malaysia. The Enforcement Division will conduct raids and seize the offending items, after which it will decide on whether to press charges against the infringer in court.

The Government is committed to eradicating the production of counterfeits in the country. The Optical Discs Act 2000 establishes a licensing and regulatory framework for all activities which are related to the manufacture of optical discs. A Special Copyright Task Force was set up in 1999 by the Ministry of Domestic Trade and Consumer Affairs (now MDTCC) to curb copyright piracy.

Will I be able to stop the importation of items which infringe my IPRs?

In Malaysia, an IPR owner may rely on border measures to prevent counterfeit goods from being imported into the country. The IPR owners would have to apply through the Registrar of Trademark, who in turn will notify the customs authorities to seize the shipment of counterfeit goods. However, the owners will have to provide specific details of the shipment including details of the importer, the registration number of the vehicle/aircraft/ship and the place where the goods would be arriving. Further, after the goods are seized the IPR owners will have to obtain the court order preventing the release of the goods to the importer within 30 days from the date the civil suit commenced, failing which the goods will be returned to the importer and the importer may then sue for damages.

What can I do if my trademark has been wrongfully registered by another party?

If the trademark has been filed but has yet to be registered, then you may oppose the registration of the mark by filing a Notice of Opposition when the trademark is published in the gazette. In Malaysia there is a 2-month window from the date the mark is gazetted for any interested party to oppose the registration of the mark.

If the trademark is already registered, you will have to file a revocation application at the High Court to remove the trademark from the Register.

Scroll to Top