Improving trademark protection in Malaysia

Pictured: Petaling Street, also known as Kuala Lumpur’s Chinatown, where counterfeit goods are often openly sold.

In July 2007, Malaysia became one of the first nations in Southeast Asia to have dedicated intellectual property (“IP”) courts to dispose of cases in a bid to step up the protection of trademark and other IP rights in the country.

About two years later, in November 2009, one of the 21 courts that had been set up handed down a 6-month custodial sentence to two local distributors of counterfeit brands of alcohol, representing the first ever criminal conviction by these specialized courts.

The country had in fact taken initial steps towards the advancement and improvement of trademark protection many years before. Key aspects of implementation that have significantly contributed to enhancing and enforcing such rights include several important amendments to the Trademark Act 1976 (“TMA”).

Having acceded to the Paris Convention for the Protection of Industrial Property (“Paris Convention”) on June 23rd 1988, changes were made to the TMA in 2000, introducing the protection of well-known marks in the country.

These amendments were put in place to give effect to Article 6bis (1) of the Paris Convention, which prohibits the registration or use of a trademark liable to create confusion with a trademark that is well known in the country in respect of identical or similar goods. The amendments made to the TMA in 2000 now provides for this form of protection in Malaysia by virtue of Section 14(2) of the TMA.

Similarly, in compliance with the Agreement on Trade-Related Aspects of Intellectual Property Agreement (TRIPS) to which Malaysia became a signatory on January 1st 1995, Part XIVA was inserted into the TMA in 2002 to lay down country border measures to be implemented in order to prevent the import of counterfeit goods.

In February 2011, amendments were made to the Trade Marks Regulations 1997. While these changes did not directly affect the enforcement of trademark protection in Malaysia, they helped improve the country’s overall trademark registration process by speeding it up. Other legislation giving protection to trademark rights in Malaysia include the Trade Description Act 1972 and the Consumer Protection Act 1975.

In what has been described as positive steps towards the advancement of IP rights in the nation, Malaysian legislation has been constantly updated to be on par with international standards on trademark protection. Both the legislative framework and establishment of specialized IP courts in the country reflect the government’s willingness to tackle the nation’s problems with regards to trademark rights and enforcement.

As a result, the efficiency and effectiveness of trademark enforcement in Malaysia has seen some improvement over the years, culminating in positive outcomes for the nation as a whole. However, many obstacles persist, and the country’s main problem, like many of her neighbours in Southeast Asia, ultimately lies with the actual enforcement of these rights provided by the law.

Overall, the establishment of IP courts in the nation has enhanced the adjudication of IP cases and at the same time, reduced the backlog of cases. Increasing the number of IP courts in each state could further improve the status of trademark enforcement in the country, and at the same time, foreign investors could be assured that nationwide, there are avenues they can go to bring matters before the courts or obtain injunctions if and when an infringement of their rights occur.