Malaysia – How To Take Action Against Counterfeits

Owners of trade marks face a difficult choice when they learn that their products have been counterfeited and are being sold in Malaysia.

The recommended course of action is to conduct an investigation by an authorized private investigator to find out who is producing or selling the counterfeit product and obtain a trap purchase. Through such investigation, other relevant information on the infringer and the counterfeit product itself can also be gathered.

Once the trap purchased is confirmed,  the lawyers acting for the trade mark owner may then apply to the Ministry for a raid on the premises where the counterfeit products are sold or stored. Copies of trade mark registrations involved and the sample of trap purchase obtained during the investigation will be provided to the Ministry. When satisfied that there is a cause of action, the Ministry will proceed to raid the premises concerned an seize the counterfeit products under the Trade Description Act.

However, in the complaint, it is normal not to disclose the exact identity and location of the premises and infringer to the Ministry. The Ministry will be informed on the day of the raid of the location of the premises.

The lawyers will liaise with the Ministry to conduct the raid and upon its successful completion, the registered proprietor will then have to assist the Ministry by analyzing the items seized and certifying them as counterfeit. The Ministry will then charge the offenders and give them an opportunity to pay a compound fine without going to Court. If they accept, then the fine is paid and the matter is closed.

However, if the infringer refuses to pay the fine, then they will be charged in Court by the Ministry, resulting in a criminal prosecution. In this instance, the registered proprietor or their local representative will have to assist in giving evidence on the counterfeit items. If the prosecution is successful, the infringer will be found liable to have committed an offence under the Trade Description Act.

Subsequently, the registered proprietor may request the Ministry to release the counterfeit goods from their custody for destruction. The manner of destruction is based on the regulations set by the Ministry of Environment of Malaysia, whereby certain goods may be incinerated while others can be specifically buried at the waste land. This Is an effective way to enforce your rights against counterfeiters in Malaysia.

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