Malaysia – Basket Of Brands Expedited Enforcement

As part of the Malaysian Government’s efforts in beefing up domestic IP Enforcement, the Ministry of patent_orderDomestic Trade, Cooperative and Consumerism (MDTCC) recently set up a separate database for Trade Mark owners to register themselves with the MTDCC in order to gain priority in the initiation of Enforcement Actions and prosecution of Trade Mark Infringement cases.

The scheme, aptly termed the ‘Basket of Brands’ scheme provides an option to Registered Trade Mark Owners in Malaysia to register their respective proprietorships in a separate, distinct database with the MDTCC by executing an undertaking termed as the ‘Undertaking to Cooperate in Completing Investigation for the Infringing Registered Trade Mark Cases.’

The introduction of this scheme is intended to aid in ridding the market of counterfeit goods, by ‘placing genuine brands in one basket’ so as to facilitate easy identification of the brands which are at risk of being infringed and to allow prompt action upon receipt of a complaint by the Trade mark owner.

Prior to this, the MDTCC had problems in successfully obtaining convictions against Trade mark infringers due to the lack of cooperation from brand owners as well as difficulties in obtaining proof of ownership of an allegedly infringed mark.

As this initiative is part of the Ministry’s efforts to expedite enforcement actions, Registered Mark Owners are also expected to play a proactive role in the investigation process. Amongst the clauses listed in this Undertaking, the brand owner is obliged to assist in verifying seized goods within a specific time frame and to participate in the identification of infringing articles.  A further requirement for becoming part of the scheme is that brand owners are required to produce the respective Trade Mark Registration Certificates to support the claim that they are the legitimate owners of the mark before they are eligible to become part of the Basket of Brands.

What naturally flows is that brand owners are given more participation in the enforcement of their own rights over the same. The effectiveness of the “Basket of Brands” scheme has yet to be measured at this early stage but it can be calculated to be expediting the enforcement of Malaysian IPRs and help considerably in respect of proof issues in prosecution. Trade Mark Owners are essentially given more control in enforcement and are duly encouraged to fully utilize this well-devised scheme. It is perhaps a prudent and wise pre-emptive measure to place your brand ‘in the basket’ accordingly.

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