WORLD TRADE
ORGANIZATIONIP/N/6/MYS/1
3 December 2001
(01-6133)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
CHECKLIST OF ISSUES ON ENFORCEMENT1
Responses from Malaysia
Civil and Administrative Procedures and Remedies
(a) Civil judicial procedures and remedies
1. Specify the courts which have jurisdiction over IPR infringement cases.
The High Courts in Malaysia have all the jurisdictions over the intellectual property right civil
infringement cases and there is no limit as to the quantum of claims made by the parties.  
2. Which persons have standing to assert IPRs? How may they be represented? Are there
requirements for mandatory personal appearances before the court by the right holder?
Rights holder or their authorized agent or power of attorney.  They can appear personally or
be represented by a legal counsel.
3. What authority do the judicial authorities h ave to order, at the request of an opposing
party, a party to a proceeding to produc e evidence that lies within its control?
In pursuance to Order 24, Rules of the High Court 1980, a party may petition the court for
ordering its opponent to produce any documents within the opponent’s control which are pertinent to
the case, that is, procedures for discovery and inspection of documents within the control of all the
parties involved in the proceedings.
4. What means exist to identify and protect confidential information brought forward as
evidence?
As a general rule under the common law, proceedings in court are not subject to restrictions
relating to fair and accurate publication which is an important tenet of freedom of speech.
Exceptional circumstances entrenched by established facts may provide exceptions whereby
publication of judicial proceedings and more particularly matters affecting the administration of
justice may be fettered or restricted either upon an application for such proceedings to be held
in camera  or in chambers or by way of the grant of an injunction (gag order).  The three exceptions to
the rule prescribing the publicity of the courts of ju stice are firstly in suits affecting wards, secondly in
lunacy proceedings and thirdly in trade secrets cases - those cases where secrecy is of the essence of
the cause e.g. secrecy of a process of manufacture or discovery of invention.
                                                     
1 Document IP/C/5.IP/N/6/MYS/1
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5. Describe the remedies that may be ordered by the judicial authorities and criteria,
legislative or jurisprudential, for their use ;
- injunctions;
- damages, including recovery of profits, and expenses, including attorney's fees;- destruction or other disposal of infringing goods and materials/implements for
their production;
- any other remedies.
Injunctions
The general jurisdiction to grant injunctions is expressed in Chapter IX of the Specific Relief
Act 1950 and paragraph 6 of the schedule to the Courts of Judicature Act 1964.  In addition, the
jurisdiction to grant injunctions is part of the equitable jurisdiction of the court.  For trademark
infringement and passing-off cases, the grant of an  injunction is governed by the general provisions
mentioned above.  For copyright infringement cas es, Section 37(1) of the Copyright Act 1987 states
that relief by way of injunction shall be available to the plaintiff.  This is also the case in patentinfringement cases wherein Section 60(1) of the Pa tents Act 1983 lays down that if an infringement is
committed, the court shall grant an injunction.  Likewise, Section 35(1) of the Industrial Designs Act
1996 echoes the same tenet.
In practice, a plaintiff who has succeeded at trial is granted a permanent injunction as a matter
of course.  In very few cases final injunctions have been refused, and these are limited to situations
where the scale of infringement is trivial or it is pr obable or certain that the infringing act will not be
repeated by the defendant.
Damages, including recovery of profits, and expenses, including attorney’s fees
- Damages
Damages are a matter of right.  A successful plaintiff is entitled to compensation for
any harm caused to him which flows directly and naturally from the tortuous act.
Damages is a legal remedy for which there is no discretion to refuse in intellectual
property right cases, unless the case was wholly quia timet  in nature.
In trademark infringement and passing-off cases, the general principles on damages
are relied upon.
In copyright infringement cases, Section 37(1) of the Copyright Act 1987 makes
specific mention of relief by way of damages or accounts that shall be available to the
plaintiff.  Further, Section 37(2) of the same allows the court to award additional
damages for the infringement after having regard to the circumstances of the case,
namely the flagrancy of the infringement and whether any benefit was shown to have
accrued to the defendant by reason of the infringement.  This type of damages, i.e.exemplary and aggravated damages are thought to be awarded for such matters such
as injury to the author’s reputation or feelings, unjust enrichment, existence of
scandalous conduct, deceit and such which includes deliberate and calculated
copyright infringement.
In patent infringement cases, Section 60(1) of the Patents Act 1983 states that
damages shall be awarded to the patentee if he has proven an infringement has
occurred.IP/N/6/MYS/1
Page 3
Section 35(1) of the Industrial Designs Act 1996 lays down that a court may award
damages or an account of profits.  However, Section 35(3) of the same provides for a
situation where the court may exercise its discretion to refuse to award damages or to
make an order for an account of profits.  If the defendant satisfies the court that firstly
at the time of the infringement he was not aware that the industrial design wasregistered and secondly he had prior to that time taken all reasonable steps to
ascertain whether the industrial design had been registered, such an award may be
refused.
Although the onus is upon the plaintiff to s how what damage has been suffered, it is
not necessary to prove any particular damage in order to succeed.  The court will
normally assume that the defendant’s wrongful acts have caused harm and if thequantification of it is difficult, or not susceptible of mathematical accuracy, a fair or
nominal figure for compensation will normally be awarded.  Some heads of damages
which are taken into account when quantifying damages are listed as below:
- loss of sales and profits,- damage to goodwill or reputation,- loss of licensing opportunity, and
- stress of competition forcing plaintiff to lower his prices.
- Account of profits
The plaintiff has an option whether to claim either damages or profits but  he cannot
have both.  The principle of an account is that the defendant is treated as having
carried on his infringing activities on behalf of the intellectual property right owner
and is therefore under a duty to hand over to the intellectual property right owner the
profits made by the infringement. Generally, an account of profits is an equitable
remedy and there is a discretion to refuse it or to limit it to take into account such
factors as the defendant’s innocence, inequitable conduct by the plaintiff or delayprejudicial to the defendant.
-C o s t s
Essentially, there are two sets of costs in any civil action.  The first is party-to-party
costs or costs as between the parties, i.e. costs including fees, charges, disbursements,
expenses and remuneration which one party may recover from the other party.  The
second is solicitor-and-own-client costs or costs payable to a solicitor by his own
client.
The power of the court to award costs is derived from paragraph 15 of the schedule to
the Courts of Judicature Act 1964, and the manner in which it is to exercise this
power is set out in Order 59 rule 2(2) of the Rules of the High Court 1980.  The costs
of an incident to an intellectual property right action, as the costs in any other action,
are in the discretion of the court which has full power to determine whom and to whatextent such costs should be paid.
The normal order is for costs to follow th e event.  Generally the court follows the
ordinary rule that the unsuccessful party shall pay the costs of the litigation, suchIP/N/6/MYS/1
Page 4
costs being taxed upon the usual scale between party to party.  In a usual case, a party
who is awarded costs will still be out of pocket to the extent that the costs payable to
his solicitor exceed the costs he has recovered from his opponent.  This happens
because of the different bases for the assessment of costs which apply as to recovery
between the parties (the party and party basis) and recovery by the solicitor from hisclient (the solicitor and client basis).
Only in isolated cases have the successful intellectual property right plaintiffs been
refused relief at trial and have been ordered to pay the costs of the action, e.g. the
defendant offered undertaking at an early stage of the trial and the plaintiff refused
the offer, trivial case where action commenced without notice to an innocent
purchaser, etc.  There are also a handful of instances where the successful defendanthas been refused costs, e.g. the defendant acted dishonestly.
Destruction or other disposal of infringing goods and materials/implements for their
production
Delivery up of the infringing goods or destruction on oath is ancillary to the grant of an
injunction.  The power of the court to grant this remedy evolved from the equitable principles:  it is
not ordered because the plaintiff has any sort of proprietary right over the items.  Though the normal
form of the order is for actual destruction or delivery up of the infringing articles, it may be modified
in certain cases.  For example, in trademark infringement cases an order for obliteration/erasure of theinfringing mark may be ordered if possible, and in patent infringement cases if the infringing article
can be rendered non-infringing by some alteration or by removal of some part.
An order for delivery up or destruction of materials/implements to produce the infringing
article will not be granted if the materials/implements are not themselves an infringement but may beused as part of an infringing apparatus.  For in stance, in literary copyright infringement cases the
printing plates may be the subject matter of such an order but it is very unlikely that the courts would
include the actual printing machine itself as part of the order for destruction.
The defendant is not entitled to any compensation for loss caused to him by such destruction
or delivery up and cannot set off the value of goods delivered up against a claim for damages.
Any other remedies
The court also has equitable powers to order that the defendant publishes corrective
statements and apologies to correct the effect of the infringement.
6. In what circumstances, if any, do judicial authorities have the authority to order the
infringer to inform the right holder of the identity of third persons involved in the
production and distribution of the goods of services found to be infringing and of their
channels of distribution?
The court also has equitable powers to order th at the defendant discloses to the successful
plaintiff the source of the infringing products and also the channel of distribution.  In addition, the
court may also order that the defendant discloses to the successful plaintiff the names and addresses of
the persons to whom the defendant had supplied and distributed the infringing products to.
It is also possible for an intellectual property right holder to apply to the court for a Norwich
Pharmacal Order.  The Norwich Pharmacal Order is sought when it is necessary to obtain information
for the purpose of ascertaining the identity of a potential defendant, so that proceedings may be
commenced against him. An intellectual property right holder could bring a specific action by writIP/N/6/MYS/1
Page 5
against a person for discovery of the name of a potential defendant if that person had facilitated the
wrongdoing of the potential defendant and has the necessary information.
7. Describe provisions relating to the indemnification of defendants wrongfully enjoined.
To what extent are public authorities and/or officials liable in such a situation and what"remedial measures" are applicable to them?
Where a defendant who has been wrongly made a party to a suit there are several modes of
recourse open to him.  Ultimately the defendant wi ll want to be compensated for the loss/damage he
suffered as a result of such a suit.  The question of liability of public authorities and/or officials does
not arise in civil suits as they do not come into the picture due to the fact that they are provided certain
legal immunities under the various laws when the acts done are in good faith.
Recovery of costs
Some of the immediate remedies available via civil provisions include the recovery of the
defendant’s costs.  Costs will be awarded to the defendant in such an instance.  If the plaintiffsues more than one party and the courts find only one defendant to be liable, then two types of
orders can be made in regards costs:
- The first is called the Bullock Order which requires the plaintiff to pay the successful
defendant his costs, and allows the plaintiff to recover them from the unsuccessfuldefendant as part of the plaintiff’s costs in the action. F or example, where the
plaintiff sues two defendants, D1 and D2 and only D1 is found liable, D1 will pay the
plaintiff’s costs and the plaintiff will pay D2’s costs.  The court’s main concern here
is to protect the successful defendant.
- The second is called the Sanderson Order.  By this order the court directs the
unsuccessful defendant to pay the costs of the successful defendant directly to him.
For example, where the plaintiff sues two defendants, D1 and D2 and only D1 is
found liable, D1 will pay both the plaintiff’s and D2’s costs.  The court will be more
disposed towards granting this order when the unsuccessful defendant is in a better
position to pay the costs.
Malicious prosecution
A defendant who has been wrongly enjoined can commence a suit in malicious prosecution
and claim for, inter alia , damages and injury he has suffered to his reputation and standing.
In an action for the tort of malicious prosecution, the plaintiff must prove the followingingredients:
- the defendants prosecuted him;
- the prosecution ended in the plaintiff’s favour;
- that the prosecution lacked reasonable and probable cause;  and- that the defendant acted maliciously.
8. Describe provisions governing the length and cost of proceedings.  Provide any available
data on the actual duration of proceedings and their cost.
There are no provisions governing the length and cost of proceedings.  The length and cost of
intellectual property right proceedings depend largely on the complexity of the issues raised and the
peculiar facts of each case.IP/N/6/MYS/1
Page 6
Intellectual property right cases that are argued out at full trial are normally long drawn and
tedious.  For example, in passing-off cases evidence will have to be led to establish goodwill and
reputation and in patent infringement cases expert witnesses will be called as a matter of course.  The
average actual duration of an intellectual property right trial is around ten (10) days, though in
complicated and extremely contentious cases the actual duration may stretch to twenty (20) days overa period of several months up to a year.  Generally, an intellectual property right case is disposed of
within three (3) to four (4) years from the date of filing the action, though in some cases this may take
longer.  In exceptional cases where early trial is ordered, the intellectual property right case can be
disposed of within two (2) years from the date of filing the action.
The actual costs incurred vary depending on the nature of the intellectual property right
dispute.  Generally, the solicitor and own client costs ranges from RM 100,000.00 to RM 500,000.00with for example a simple trademark infringement matter usually attracting the lower limit of the
scale and a difficult patent infringement matter or a multiple infringement matter at its upper limit.
(b) Administrative procedures and remedies
9. Reply to the above questions in relation to any administrative procedures on the merits
and remedies that may result from these procedures.
Malaysia chooses to deal with cases on infringement of intellectual property right through
judicial proceedings.
Provisional Measures
(a) Judicial measures
10. Describe the types of provisional measures that judicial authorities may order, and the
legal basis for such authority.
Interlocutory injunctions
- Jurisdiction
The jurisdiction to grant interlocutory injunctions is expressed in Section 51(1) of the
Specific Relief Act 1950 and paragraph 6 of the schedule to the Courts of Judicature
Act 1950.  In addition, the jurisdiction to grant injunctions is part of the equitable
jurisdiction of the court.
- Types of injunctive relief
An application for an interlocutory injunction may be made by any party to a cause or
matter at any stage of the proceeding.  There are several types of such injunctive
relief available to an applicant (either the plaintiff or the defendant) in a civil suit.These include restrictive/prohibitive orders where a party is ordered to refrain from
doing something, mandatory orders where a party is required to perform a positive act
or quia timet  orders where there is a threatened or continuing wrong which is
calculated to infringe the plaintiff’s rights.IP/N/6/MYS/1
Page 7
- Interlocutory prohibitory injunctions
The principles which determine whether the interlocutory injunction should be
granted were laid down by the House of Lords in the leading case of American
Cyanamid Co v Ethicon Ltd [1975] AC 396 .  There are several questions to be asked:
             - Is there a serious issue to be tried?  If the answer is no, then the application
fails in limine .   Here, all the plaintiff has to show is that there is a valid cause
of action at law.  The chances of success are immaterial.
             - Once the court has found that there is a serious issue to be tried, it should go
on to consider the adequacy of the respective remedies in damages availablefor either party.
                          - The court asks whether if the plaintiff were to succeed at trial, would
he be adequately compensated by an award of damages for the loss
he would have sustained as a result of the defendant’s continuing todo what was sought to be enjoined between the time of the
application and the time of the trial.  If damages would be an
adequate remedy and the defendant would be in a financial position
to pay them, no interlocutory injunction should be granted.
                          - If on the other hand damages would not provide adequate remedy for
the plaintiff in the event of his succeeding at trial, the court should
then consider whether on the contrary hypothesis that the defendant
were to succeed at trial in establishing his right to do that which was
sought to be enjoined he would be adequately compensated under theplaintiff’s undertaking as to damages for loss he would have
sustained by being prevented from doing so between the time of the
application and the time of trial.  If damages would be an adequate
remedy and the plaintiff would be in a financial position to pay them,
there would be no reason to refuse an interlocutory injunction.
             - It is where there is doubt as to the adequacy of the respective remedies in
damages available to either party or to both that the question of balance of
convenience arises.  This is a term of the art which refers to the balancing
exercise by the judge in weighing the risks that injustice may result from his
deciding the application one way rather than the other.  The various matters
which may need to be taken into consideration in deciding where the balancelies is not exhaustive;  it varies from case to case.  Some examples would be
preservation of the status quo .
             - There may also be other special factors to be taken into consideration in the
particular circumstances of individual cases eg intellectual property rightcases.
This has been accepted by the Malaysian courts.
- Interlocutory mandatory injunctions
An interlocutory mandatory injunction generally requires the respondent to perform a
specific act to undo what he has done in the past.  This remedy is given specific
statutory effect by Section 53 of the Specific Relief Act 1950.IP/N/6/MYS/1
Page 8
Because the award of an interlocutory mandatory injunction will often amount to
granting the applicant the entire or major part of the relief claimed, the courts are far
more reluctant to grant an interlocutory mandatory injunction than it would an
interlocutory prohibitory injunction.  The courts have declared that the discretion togrant an interlocutory mandatory injunction must be only exercised in exceptional
and extremely rare cases.
As such, the standard of proof in such applications are higher than that required for a
prohibitory injunction.  For such an injunction to be awarded, the plaintiff’s case must
be unusually strong and clear, and the defendant has no arguable defence.
Anton Piller orders
An Anton Piller order enables the plaintiff or his representatives to enter the defendant’s
premises to search for, inspect and seize the material, whether documents, articles or othermaterials, so that they may be preserved until trial.  The general practice is for the plaintiff’s
solicitors to arrange and supervise the execution of the order.  The defendant may also be
ordered to give information concerning his activities in relation to a particular matter.  The
Anton Piller order does not allow the plaintiff or his representatives to enter the defendant’s
premises or take his property unless the defendant consents to these acts.  However, if thedefendant refuses to give his permission, he may be liable for contempt.
The main reason for an Anton Piller order is to enable the plaintiff to discover and preserve
evidence against the defendant in the defendant’s possession and is likely to be destroyed or
concealed by him.  Other reasons would include to identify and obtain evidence against otherswho have been involved with the defendant in the tortuous acts, to prevent the defendant from
warning others to destroy or conceal evidence and to prevent further damage to the plaintiff.
The Anton Piller order is normally used in conjunction with the other interlocutory remedies.
The principles governing the grant of an Anton Piller order are as embodied in the case of
Anton Piller KG v Manufacturing Processes Ltd [1976] Ch 55 , where the following
conditions were laid down:
- There must be an extremely strong prima facie  case.  The Anton Piller Order will not
be made to enable a plaintiff to fish for evidence in order to justify mere suspicion.
- The damage, potential or actual must be very serious for the applicant.- There must be clear evidence that the defendants have in their possession
incriminating documents or things, and there is a real possibility that they may
destroy such material before any application inter partes  can be made.  Here there is a
difference between a real possibility and extravagant fears which seem to afflict allplaintiffs who have complaints of breach of confidence, breach of copyright or
passing-off.
- The harm likely to be caused by the execution of the Anton Piller Order to the
respondent or his business affairs must not be excessive or out of proportion to thelegitimate object of the order.IP/N/6/MYS/1
Page 9
Mareva injunctions
The Mareva injunction is a remedy which is collateral to the main action.  The Mareva
injunction enables the seizure of assets until conclusion of the trial so as to preserve them for
the benefit of the creditor, but not to give charge in favour of any particular creditor.  Itgenerates exclusively rights in personam  rendering a breach a contempt of court.  Although
the Mareva injunction is most frequently exerci sed prior to judgement, the court may, in the
appropriate circumstances grant the injunction after judgement in aid of its execution.  The
order is addressed to the defendant but also binds third parties who are affected by it, e.g.
banks.  In recent times the courts have expressed a willingness to extend the Mareva
injunction to assets outside the jurisdiction.
The courts in Malaysia have accepted the principles enunciated in the case of Third Chandris
Shipping Corporation v Unimarine S.A. [1979] QB 645  whereby to succeed in an application
for a Mareva injunction, the claimant must satisfy four basic principles:
- That he has a valid cause of action over which the court has jurisdiction.- That he has a good arguable case.  Here this means that the plaintiff must demonstrate
a likelihood of success, but he does not have to establish a particular degree of
likelihood.
- That the defendant has assets within jurisdiction.  In most cases the plaintiff will not
know the extent of the defendant’s assets, but he may have indications of what assets
are available, e.g. bank accounts, land, chattels, company’s goodwill, choses in
action.
- That there is a real risk that the assets may be disposed of or dissipated so that the
judgement cannot be enforced.
Other forms of interim relief
- Sale of  perishable property, Order 29 rule 4 of the Rules of the High Court 1980.
- Order for samples to be taken, Order 29 rule 3 of the Rules of the High Court 1980.- Order for detention, preservation or custody of property, Order 29 rule 2 of the Rules
of the High Court 1980.
- Early trial, Order 29 rule 5 of the Rules of the High Court 1980.
11. In what circumstances may such measures be ordered inaudita altera  parte ?
Effective use of interlocutory measures may require that action be taken without giving prior
notice to the other side.  The courts have powers to adopt provisional measures inaudita altera parte
i.e. without prior hearing of the other side in appropriate cases.  These are cases of utmost urgency or
where any delay is likely to cause irreparable harm to the intellectual property right holder, or where
there is a high risk of evidence being destroyed or funds being dissipated to thwart a judgement.  Theabove-mentioned provisional remedies, i.e. interlocutory injunction, Mareva injunction and Anton
Piller orders may all be made inaudita altera parte .  Indeed, for Mareva injunctions and Anton Piller
orders, it is the norm that such applications be made on an ex parte  basis.IP/N/6/MYS/1
Page 10
12. Describe the main procedures for the init iation, ordering and maintenance in force of
provisional measures, in particular relevant time-limits and safeguards to protect the
legitimate interests of the defendant.
- Procedure for interlocutory injunctions
The procedure to be followed is governed by Order 29 of the Rules of the High Court
1980.  Interlocutory injunctions can be made ex parte  or inter partes .
For inter partes  applications, the applicant must first commence the proceedings by
issuing and serving the originating process.  An application may only be made before
the issuance of the originating process if the case is one of urgency.  He then issuesand serves a summons in chambers which notifies the defendant the date and time of
the hearing of the applications and the terms of the order sought.  The summons in
chambers will be supported by an affidavit in support of the application which sets
out the facts and the grounds on which the claim to the injunction is based.  A
certificate of urgency is usually also filed.  The defendant has an opportunity toanswer to the allegations raised by way of filing and serving an affidavit in reply, and
the plaintiff’s response thereto is limited to addressing points which have not been
raised before.  This process can go on until parties decide not to file any further
affidavits or until there are no issues to be addressed.  The application will then be
heard by the judge in chambers and a decision is usually granted on the day of thehearing though in more complicated cases judgement may be reserved.  Generally,
inter partes  interlocutory injunctions are disposed of between two (2) months to eight
(8) months.  This is largely dependant on whether the parties require time to file their
affidavits in reply.
Ex parte  interlocutory injunctions are valid twenty-one (21) days from the date of
grant.  There is no provision to extend its duration, so if the order lapses there is a
need for the applicant to re-apply for a fresh interim injunction.  If the applicant
wishes to continue the injunction until trial or further order he should make his case at
the inter partes  hearing on the return date.  The applicant must first commence the
proceedings by issuing the originating process.  He then issues a summons in
chambers supported with an affidavit as in the case of an inter partes  application, and
also files a certificate of urgency.  The only difference is that none of these
documents are served on the defendant until after the order is granted.   The ex parte
interlocutory injunction is not so common these days after the introduction of
Order 29 rule 2A of the Rules of the High Court 1980 which imposes new and
stringent conditions which the affidavit must satisfy.  The defendant may also applyfor the discharge or variation of the ex parte  interlocutory injunction.
An undertaking as to damages ought to be given on every interlocutory injunction.
The plaintiff should in the affidavit supporting the affidavit depose both his
willingness to volunteer and his ability to  honour an undertaking as to damages.  The
cross-undertaking in damages is to ensure that if the interlocutory injunction is
discharged, the person obtaining the injunction undertakes to pay such damages as the
court may be of the opinion to compensate the other party for the loss suffered as a
result of the grant of the injunction.
- Procedure for Anton Piller orders
The application for an Anton Piller order is more often than not made ex parte  so as
not to give the defendant an opportunity by notice to obstruct the purposes of theIP/N/6/MYS/1
Page 11
remedy.  The documentation required and duration of proceedings are similar to those
of an ex parte  interlocutory injunction, though special requirements apply to the
affidavit in support of the application.
As the Anton Piller order is a draconian measure, there are various safeguards for the
protection of the defendant.  Besides the undertaking as to damages like in the case of
an interlocutory injunction, the following guidelines have been formulated by the
courts to prevent an abuse of the procedure:
             - Orders should extend no further than the minimum extent necessary to
achieve the purpose for which they are granted.  So, once the plaintiffs’
solicitors have had an opportunity to take copies of documents, these shouldbe returned to the owner.
             - The solicitors executing the order should prepare a detailed record of the
items they are about the remove.
             - Items which are not clearly within the scope of  the order should not be taken.
It is wholly unacceptable if the defendant is procured by the executing
solicitors to give consent to additional material being removed.  Such consent
will only be deemed to be freely and effectively given if the defendant’s
solicitor is present to ensure and confirm that the consent was a free andinformed one.
             - Where the ownership of the materials is in dispute, it is not appropriate for
the plaintiff’s solicitors to retain them pending trial.
             - There is a heavy duty on the part of the plaintiff to provide full and frank
disclosure.
             - No order should be made for the delivery up of a defendant’s wearing
apparel, bedding, furnishings, tools of his trade or stock in trade which it is
likely that he uses for the purposes of a lawful business.
             - All orders should specify cl early what chattels or classes of goods are to be
delivered up.  A plaintiff’s inability to identify what he wants delivered up
and why is an indication that no order should be made.
             - The terms of an Anton Piller order must be clear so that the plaintiff is not
entitled to take advantage of any ambiguity during the execution of the order.
             - The  Anton Piller order will  include notification to the defendant that he is at
liberty to apply for a variation or discharge of the order upon giving short
notice.
When faced with an Anton Piller order the defendant may be able to claim privilege
against self incrimination.
- Procedure for Mareva injunctions
The procedure which concerns the application for an interlocutory injunction and the
duration of proceedings apply to the Mareva injunction.  The application is invariably
made ex parte  so that the defendant is not given the opportunity to dispose of orIP/N/6/MYS/1
Page 12
dissipate his assets prior to the making of the order.  It may be necessary for hearings
of applications of Mareva injunctions to be conducted in camera , especially where
the injunction is sought against banks and similar lending institutions which utterly
depend on confidence in their financial stability if they were to carry on business
normally.  Special requirements apply to the affidavit in support of the application.
As a safeguard to the defendant, the plaintiff is also required to furnish an
undertaking as to damages.  The Mareva injunction may also be discharged or varied
on the application of the defendant.
13. Describe provisions governing the length and cost of proceedings.  Provide any available
data on the actual duration of proceedings and their cost.
There are no provisions governing the length and cost of interlocutory injunctions, Anton
Piller orders or Mareva injunctions.
Generally, ex parte  applications are heard within seven (7) days of filing and an order is
normally made on the hearing date itself.
Hearing dates for inter partes  applications are fixed within two (2) months of the date of
filing, though in the majority of contested applications another date would be taken as parties may still
wish to file affidavits in reply.  In heavily contested inter partes  applications, the actual duration of
proceedings is two (2) days.  Nevertheless such applications are usually disposed of in one (1) day.
The cost of interlocutory applications varies depending on the nature of the case and the type
of relief sought.  Generally, the solicitor and own clients cost for an ex parte  interlocutory injunction
is approximately RM 10,000.00, and in the case of an inter partes  interlocutory injunction the range is
between RM 20,000.00 and RM 40,000.00 depending on the complexity of the case.  As for Mareva
injunctions, the cost is around RM 20,000.00.  Anton Piller orders, including execution would cost at
least RM 50,000.00 upwards depending on the number of premises to be entered.
(b) Administrative measures
14. Reply to the above questions in relation to any administrative provisional measures.
No comment.
Special Requirements Related to Border Measures
15. Indicate for which goods it is possible to apply for the suspension by the customs
authorities of the release into free circulat ion, in particular whether these procedures
are available also in respect of goods which involve infringements of intellectual
property rights other than counterfeit trademark or pirated copyright goods as defined
in the TRIPS Agreement (footnote to Article 51).  Specify, together with relevantcriteria, any imports excluded from the application of such procedures (such as goods
from another member of a customs union, goods in transit or de minimis imports).  Do
the procedures apply to imports of goods put on the market in another country by or
with the consent of the right holder a nd to goods destined for exportation?
Under the current laws, border control measures exist for counterfeit trademark and pirated
copyright goods only.  The provisions governing the former were just introduced recently and are
found in Part XIVA of the Trade Marks Act 1976, whereas the provisions for the latter existed for
some time now under Section 39 of the Copyright Act 1987, but were also recently amended to bringIP/N/6/MYS/1
Page 13
Malaysia in line with Section 4 of the Agreement on Trade-Related Aspects of Intellectual Property
Rights.  Counterfeit trademark goods are defined exactly as in the Agreement on Trade-Related
Aspects of Intellectual Property Rights, whereas the restriction on importation of infringing copies of
copyrighted works covers any copy of a work made outside Malaysia the making of which was
carried out without the consent or licence of the owner of the copyright in the work.
Goods in transit are excluded from the applicatio n of such procedures.  Section 70D(8) of the
Trade Marks Act 1976 specifically excludes goods in transit.  The Copyright Act 1987 is silent, but it
is argued that the definition of "import" does not include goods in transit or goods in a bonded
warehouse.  De minimis  imports, i.e. goods of a non-commercial nature contained in travellers’
personal luggage or sent in small consignments are also excluded from the application of such
procedures.  Section 39(3) of the Copyright Act 1987 states clearly that the section shall not apply to
the importation of any copy by a person for his private and domestic use.  The Trade Marks Act 1976
is silent, but it is submitted that a general reading of Part XIVA suggests that it does not cover such an
instance.
The border control procedures do not apply to parallel imports, i.e. goods put on the market in
another country by or with the consent of the right holder and to goods destined for exportation.
16. Provide a description of the main elements of the procedures relating to the suspension
of the release of goods by customs authoritie s, in particular the competent authorities
(Article 51), the requirements for an application (Article 52) and various requirementsrelated to the duration of suspension (Artic le 55).  How have Articles 53 (security or
equivalent assurance), 56 (indemnification of the importer and of the owner of the
goods) and 57 (right of inspection and information) been implemented?
- Counterfeit trademark
The competent authority for enforcing border control measures is the Customs
Department.
Any person may submit an application to the Registrar of Trade Marks supported by
documents and information relating to the goods stating that:
             - he is the proprietor of a registered trade mark or an agent of the proprietor
having the power to submit such an application;
             - that, at a time and place specified in the application, goods which are
counterfeit trademark goods are expected to be imported for the purpose oftrade;  and
             - he objects to such importation.
(Section 70D(1) Trade Marks Act 1976)
In practice, there is a standard form for this application, i.e. Form TM 30.   Upon the
grant of approval, the Registrar of Trade Marks shall also require the applicant to
deposit a security.  The quantum of the security deposit must, in the opinion of theRegistrar be sufficient to:
             - reimburse the Government for any liability or expense it is likely to incur as a
result of the seizure of the goods;IP/N/6/MYS/1
Page 14
             - prevent abuse and to protect the importer;  or
             - pay such compensation as may be ordered by the court if the applicant fails to
take action for infringement within the retention period.
(Section 70E Trade Marks Act 1976)If approval is granted, it is valid for only sixty (60) days commencing from the day
approval was given, unless withdrawn before the end of the period by the applicant.
(Section 70D(5) Trade Marks Act 1976).  Once approval is granted, the Registrar of
Trade Marks will immediately take the necessary measures to notify the Customs ofthe impending shipment.  The Customs shall then take the necessary action to seize
and detain the identified goods.
As soon as is reasonably practicable after the goods are seized, the Customs shall
issue a notice to the Registrar, importer and applicant of the seizure and thewhereabouts of the goods, and that unless an action for infringement is instituted by
the applicant within a specified period from the date of the notice the goods will be
released to the importer.  (Section 70G Trade Marks Act 1976)  If the applicant
requires an extension of time to file the infringement suit, he may request for the
same from the Registrar of Trade Marks.
The Registrar may permit the applicant or the importer to inspect the seized goods
and to remove a sample of the seized goods if he agrees to give the requisite written
undertakings, namely that he will:
             - return the sample of the seized goods to the Registrar at a specified time that
is satisfactory to the Registrar;  and
             - take reasonable care to prevent damage to the sample.
(Section 70H Trade Marks Act 1976)
If the applicant fails to take action for infringement within the retention period, the
importer or the owner of the goods may apply to the court for an order of
compensation against the applicant.  (Section 70K Trade Marks Act 1976)
- Pirated copyright
The competent authority for enforcing border control measures is the Customs
Department, though in copyright cases the Ministry of Domestic Trade and Consumer
Affairs and the Police are also empowered to search for and seize any infringingcopies which are prohibited from being imported into Malaysia.  (Section 39(6)
Copyright Act 1987)
The owner of copyright in any work, or any person authorised by him may make an
application to the Controller of Copyright to request that during the period specifiedin the application copies of the work made outside Malaysia without the consent of
the copyright owner shall be treated as infringing copies.  The application shall:IP/N/6/MYS/1
Page 15
             - be in such form as may be prescribed;
             - state that the person named in it is the owner of the copyright;  and             - be supported by such documents and information, and accompanied by such
fee as may be prescribed.
(Section 39(1A) Copyright Act 1987)Upon receipt of the application the Controlle r of Copyright shall inform the applicant
whether the application has been approved and if so, specify the period during which
the copies will be treated as infringing copies.  Upon approval, the Controller ofCopyright shall require the copyright owner to deposit a security which in the
Controller’s opinion is sufficient to reimburse the Government for any liability or
expenses which may be incurred in consequence of the detention of the infringing
copies or in consequence of anything done in relation to a copy so detained.
(Section 39(5) Copyright Act 1987)
When seizures are made, the seizing officer shall forthwith give written notice to the
owner of the infringing copies details of such seizure and the grounds thereof.
(Section 39(7) Copyright Act 1987)
17. Describe provisions governing the length and cost of proceedings.  Provide any available
data on the actual duration of proceedings and their cost.  How long is the validity of
decisions by the competent authorities for the suspension of the release of goods into free
circulation?
The border control measures are so new that they have yet to be invoked by the intellectual
property right holders.
18. Are competent authorities required to act upon  their own initiative and, if so, in what
circumstances?  Are there any special provisions applicable to ex officio  action?
The intellectual property right holders have to take their own initiative to lodge official
complaints to the competent authorities.  Section 70o of the Trade Marks Act 1976 provides for
ex officio  action.
19. Describe the remedies that the competent authorities have the authority to order and
any criteria regulating their use.
When an official complaint from the intellectual property right holder has been lodged
through the Registrar of Trade Marks, any authorised officer may detain or suspend the release ofgoods which based on prime facie  evidence are counterfeit trademark goods.  The authorised officer
will than inform the Registrar of Trade Marks, the importer and the proprietor of the trademark of the
detention.  From there onwards, the proprietor will take action against the importer.  Remedies are
available only through recourse to the courts of law.IP/N/6/MYS/1
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Criminal Procedures
20. Specify the courts which have jurisdiction over criminal acts of infringement of IPRs.
The courts are the Sessions Courts and the Magistrate Courts.  The Sessions Courts may
impose maximum penalties provided for by the law, whereas the Magistrate Courts may impose
penalties of a fine not exceeding  RM 10,000.00 and an imprisonment of not exceeding five (5) years
unless otherwise provided by the law.
21. In respect of which infringements of which intellectual property rights are criminal
procedures and penalties available?
Criminal procedures and penalties in respect of infringements of intellectual property rights
are available in the trademarks law and copyright law.
With respect to trademarks infringement, criminal procedures and penalties are available
where trademarks are used as trade descriptions.  It is a criminal offence under the Trade DescriptionsAct 1972 where false trade descriptions are used on goods in the course of trade or business.  This is
commonly known as fake or counterfeit products.
Matters pertaining to copyright are governed under the Copyright Act 1987.  Under the Act, it
is a criminal offence for any person who during the subsistence of copyright:  under section 41:
- makes for sale or hire any infringing copy;- sells, lets for hire or by way of trade, exposes or offers for sale or hire any infringing
copy;
- distributes any infringing copy;- possesses, otherwise than for his private and domestic use, any infringing copy;- by way of trade, exhibits in public any infringing copy;
- imports into Malaysia, otherwise than for his private and domestic use, an infringing
copy;  or
- makes or has in his possession any contrivance used or intended to be used for the
purpose of making infringing copies.
It is also a criminal offence for any person who causes an unauthorised literary or musical
work to be performed in the public.
22. Which public authorities are responsible fo r initiating criminal proceedings? Are they
required to do this on their own initiative and/or in response to complaints?
The Enforcement Division of the Ministry of Domestic Trade and Consumer Affairs is given
the necessary power to initiate criminal proceedings under the Trade Descriptions Act 1972 and the
Copyright Act 1987.  The officers of the Divi sion who have the power of enforcement and
prosecution are appointed under the Trade Descriptions Act 1972 and the Copyright Act 1987 as the
Controller, Deputy Controller and Assistant Controller, respectively.  The Royal Malaysian Police has
also similar power under the Copyright Act 1987.IP/N/6/MYS/1
Page 17
Under the Trade Descriptions Act 1972, the En forcement Division may initiate on their own
without the complaint from the right owner.  No warrant is needed to enter any premises except
premises used for dwelling.  However, if the fake  or counterfeit products are not too familiar to the
authorities, assistance from the trademark owner is usually required.
Under the Copyright Act 1987, it is specifica lly provided that the authority may act upon
complaint from the copyright owner.  To enter and search any premises, a search warrant is needed.
However a search warrant may be dispensed if there is reasonable grounds for believing that due to
the delay in getting a warrant from a court the infringed items may be removed or destroyed.
23. Do private persons have standing to initiate criminal proceedings and, if so, who?
Generally, private persons do not have the locus standi  to initiate criminal proceedings unless
that person is an advocate and has been consented in writing by the Public Prosecutor.
24. Specify, by category of IPR and type of infringement where necessary, the penalties and
other remedies that may be imposed:
- imprisonment;
- monetary fines;
- seizure, forfeiture and destruction of infringing goods and materials and
implements for their production;
- other.
The penalties for offences of applying false trade descriptions are under the Trade
Descriptions Act 1972 as follows:
- For an individual, a fine not exceeding RM100,000.00 or imprisonment not
exceeding three (3) years or both.  For any subsequent offences, a fine not exceeding
RM250,000.00 or imprisonment not exceeding six (6) years or both.
- For a body corporate, a fine not exceeding RM250,000.00 and for any subsequent
offences,  a fine not exceeding RM500,000.00.
For offences under section 41(a) to (f) of the Copyright Act 1987, the law provides for a fine
not exceeding RM10,000.00 or an imprisonment of not exceeding five (5) years or  both for each
infringing copy.  For any subsequent offences, a fine not exceeding RM20,000.00 or an imprisonment
of not exceeding ten (10) years or  both for each infringing copy.  For offences under paragraph (g), a
fine not exceeding RM20,000.00 or an imprisonment of not exceeding ten (10) years or  both for each
infringing copy.  For any subsequent offences, a fine not exceeding RM 40,000.00 or an
imprisonment of not exceeding twenty (20) years or  both for each infringing copy.  This concerns
anyone who:
- makes for sale or hire any infringing copy;- sells, lets for hire or by way of trade, expose or offers for sale or hire any infringing
copy;
- distributes any infringing copy;- possesses, otherwise than for his private and domestic use, any infringing copy;- by way of trade, exhibits in public any infringing copy;IP/N/6/MYS/1
Page 18
- imports into Malaysia, otherwise than for his private and domestic use, an infringing
copy;  or
- makes or has in his possession any contrivances used or intended to be used for  the
purpose of making infringing copies.
For an offence of causing a literary or musical work to be performed in public, the penalty is a
fine not exceeding RM25,000.00 or an imprisonment of not exceeding three (3) years or  both.
25. Describe provisions governing the length and any cost of proceedings.  Provide any
available data on the actual duration of proceedings and their cost, if any.
The duration of court proceedings generally depends on the complexity of the case and the
volume or number of cases produced by the respective districts or states.  Under the Trade
Descriptions Act 1972, an investigation for an of fence may take three (3) weeks while under the
Copyright Act 1987, it may take six (6) weeks.  U pon completion of the investigation, if there is a
prima facie  case, it will than be taken to court.  Prosecution of a case would depend on whether or not
the accused person pleads guilty to the charge, number of witnesses forwarded by the prosecution,
complexity of the case and other issues brought by the defence attorney.
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