IP infringement may lead to criminal prosecution in Malaysia
Updated: Jan 7, 2019
Do you know that certain acts of intellectual property rights infringement may lead to criminal prosecution in Malaysia? This article will highlight situations in which an infringer could be charged for an offence arising out of infringement of intellectual property rights.
Trade Mark Infringement
In addition to civil action for trade mark infringement under the Trade Marks Act, an infringer may also be prosecuted under the Trade Descriptions Act if the infringer's act falls within any of the following prohibited acts:
(a) applies a false trade description to any goods as if the goods were subject to any rights relating to registered trade mark;
(b) supplies or offers to supply any goods to which a false trade description is applied as if the goods were subject to any rights relating to registered trade mark; or
(c) exposes for supply or has in his possession, custody or control for supply any goods to which a false trade description is applied.
This is pursuant to Section 8 of the Trade Descriptions Act which clarifies that the definition of "trade description" shall include an indication in respect of goods relating to any rights in respect of registered trade mark. Furthermore, Section 9 also provides for an avenue for trade mark proprietor to apply for a Trade Description Order in respect of marks applied on goods that are not identical to the registered trade mark but could still be passed off as the registered trade mark. With such an Order granted by the Court, the infringer could be charged under Section 8 if the infringer's act falls within the prohibited acts above.
In addition to civil action for copyright infringement, an infringer may also be prosecuted for offences under Section 41 of the Copyright Act if the infringer's act falls within any of the following prohibited acts:
(a) makes for sale or hire any infringing copy;
(b) sells, lets for hire or by way of trade, exposes or offers for sale or hire any infringing copy;
(c) distributes infringing copies;
(d) has in his possession, custody or control, otherwise than for his private and domestic use, any infringing copy;
(e) by way of trade, exhibits in public any infringing copy;
(f) imports into Malaysia, otherwise than for his private and domestic use, an infringing copy;
(g) makes or has in his possession any contrivance used or intended to be used for the purposes of making infringing copies.
Other relevant offences
Circumvention of technological protection measure
The Copyright Act also makes it an offence to:
(a) circumvent or cause or authorise the circumvention of any effective technological measures;
(b) manufacture, import or sell any technology or device for the purpose of the circumvention of technological protection measure.
Technological protection measure means a technology/device used in relation to the copyright work that prevents or limits the doing of any act which may be deemed to be infringing the copyright work.
Removing/altering rights management information
The Copyright Act makes it an offence to:
(a) remove or alter any electronic rights management information without authority;
(b) distribute, import for distribution or communicate to the public, without authority, works or copies of works in respect of which electronic rights management information has been removed or altered without authority.
Rights management information refers to information identifying the work, author, owner, performer, terms and conditions of use or any other codes that represent such information.
The Copyright Act also provides for offences relating to anti-camcording to combat piracy. Any person who operates an audiovisual recording device in a screening room (e.g. cinema) to record any film in whole or in part, or attempts to do so, may be prosecuted for an offence under Section 43A of the Copyright Act.
The author is one of our partner practising in intellectual property. If you require further information or assistance, he can be contacted at firstname.lastname@example.org.