Trademarks Act 2019 ' How The Courts Have Applied The Provisions In Criminal Prosecutions

Published date20 October 2022
Subject MatterIntellectual Property, Trademark
Law FirmWong Jin Nee & Teo
AuthorMr Loo Wai Hoong

Loo Wai Hoong shares the Malaysian courts' recent sentencing trends in relation to criminal offences involving counterfeit goods under the relevant provisions of the Trademarks Act 2019.

Ever since the introduction of the new Trademarks Act 2019 ("the Act") at the tail-end of 2019, there have been a number of prosecutions and convictions secured against infringers dealing in counterfeit goods pursuant to raid and seizure actions conducted by the Enforcement Division of the Ministry of Domestic Trade and Consumer Affairs (MDTCA).

The Relevant Provisions under the Act

Unlike its predecessor, the Act contains a number of provisions dealing with criminal offences relating to trademarks, some of which were previously governed by the Trade Descriptions Act 2011. The following are some of the relevant provisions applied by the courts for the purpose of convicting offenders.

Pursuant to section 99(1) of the Act, it is an offence for any person to counterfeit a registered trademark without the owner's consent either by (a) by making an identical or similar mark with the intent to deceive; or (b) falsifying a genuine registered trademark whether by alteration, addition, effacement, partial removal or otherwise. If convicted, the offender is liable to a maximum fine of RM1,000,000 (approx. US$250,000) or imprisonment of up to 5 years or both.

Further, it is also an offence for any person to falsely apply a registered trademark to goods or services by virtue of section 100(4) of the Act. The offender is deemed to have "falsely applied a registered trademark" when:

  • a mark that is likely to be mistaken for the registered trademark is applied to goods or services without the owner's consent; and
  • in the case of goods, they are not the genuine goods of the owner or its licensee.

The applicable penalties for a contravention of section 100(4) of the Act would depend on whether the offence was committed in respect of goods or services.

For goods, if the offender is:

  • a body corporate - A fine of up to RM15,000 (approx. US$3,750) for each of the goods (1stoffence) / up to RM30,000 (approx. US$7,500) for each of the goods (subsequent offence)
  • an individual - A fine of up to RM10,000 (approx. US$2,500) for each of the goods or imprisonment of up to 3 years or both (1stoffence) / up to RM20,000 (approx. US$5,000) for each of the goods or imprisonment of up to 5 years or both (subsequent offence)

For services, if the offender is:

  • a body corporate - A fine of up to RM100,000...

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