The Malaysian government decided to amend the Trade Marks Act 1976 due to the country’s accession to the Madrid Protocol and passed the new Trademarks Act 2019, which came into force in December 2019. Several key changes were made to the enforcement of trademark infringement under the new Trademarks Act 2019. Among the key changes are:
- Enforcement Officers of the Ministry of Domestic Trade and Cost of Living (KPDN) are now empowered to investigate and enforce against acts of trademark infringement under Sections 110 and 111 of the Trademarks Act 2019.
Procedures for Enforcement Action
We have compiled a list of the required documents needed to enforce your trademark rights in Malaysia. The good news is that we can prepare all the necessary documents on your behalf to assist you or your client in enforcing your trademark rights in Malaysia. Some of the documents that must be submitted include:
- Letter of complaint lodged at the nearest KPDN branch where the infringing acts are taking place.
- Copies of trademark registrations in Malaysia.
- Power of Attorney from the trademark owners to the representative in Malaysia, who will assist KPDN officers in conducting raid actions and seizing infringing goods in Malaysia.
- Surveillance reports documenting the infringing acts.
- Photographs showing the original and infringing goods.
Timeline for the Enforcement Action
Once the above documents have been submitted, it typically takes between 7 working days and up to 1 month (for KPDN in Kuala Lumpur) to schedule the raid action and seize the infringing goods.
What happens on the day of the Raid Action
If enforcement action is conducted by Enforcement Officers of the Ministry of Domestic Trade and Cost of Living (KPDN), a representative of the trademark owners will participate in the raid. It’s important to note that the Royal Malaysia Police (PDRM) or the Royal Malaysian Customs Department (JKDM) may also be involved in such raid actions in Malaysia.
What happens after the Enforcement Action
The representative in Malaysia for the trademark owners will prepare both the Verification Report for the infringing goods seized during the raid action and the Criminal Procedure Code (CPC) statement. These documents will be submitted to the Investigating Officer appointed by KPDN for further action, including criminal prosecution under Section 102 of the Trademarks Act 2019 by the Deputy Public Prosecutor.
The trademark owners may also pursue separate civil action against the alleged infringer to seek damages for the infringing acts.
Do you need to Enforce your Trademark rights in Malaysia
Please feel free to get in touch with us if you have any inquiries regarding trademark enforcement issues in Malaysia. We will be happy to assist you.
Written by:
Hardeep Singh
hardeep@hardeep.com.my