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Changes brought by amendment of 2011 to Trade Description Act:

The Trade Descriptions Act 1972 has been repealed and replaced by the Trade Descriptions Act
2011, new Act having come into effect since 1st November 2011. Its purpose is to promote good
trade practices by prohibiting false trade descriptions and false or misleading statements,
conduct and practices in relation to the supply of goods and services.
Some salient changes of the new Act include:

Section 9(1) Trade Description Orders (TDO)1 are now reserved for owners of
registered trademarks, in contrast to the 1972 Act where common law owners are also
eligible. Such a limitation may not be popular but it will encourage registration of trade
marks.
Section 9(2) A TDO is now valid for a mere one year which was valid for five years
earlier, unless renewed by the High Court on such terms and for such further period as
the Court may decide. This is more administratively burdensome but renewal would not
be withheld unreasonably.
Section 20 It is now a punishable offence to make false or misleading statement in
relation to contests and games. This would hopefully curb sham scratch & win games
of chance, with false promises of prizes that abound in Malaysia.
Section 23 Personal or domestic use is now a defense to a person charged under the
Act. However, a body corporate is not entitled to rely on such defense.
Section 44 It is an offence to disclose information that is likely to prejudice an
investigation under the Act. Some defenses have been provided under this new tippingoff provision.
Sections 53 & 66 These new sections allow admissibility of evidence obtained by
agent provocateur (abetting the commission of an offence for the sole purpose of
securing evidence) and rewarding whistleblowers with part (not more than 50%) of the
fine imposed upon securing a conviction. This is to encourage the publics participation;
in an Act that is ultimately meant to protect the same public.
Section 28 & 29 -The Domestic Trade, Cooperative and Consumerism Minister is
empowered to assign any expression or description used for goods or services and to
appoint exclusive awarding bodies of such expression and description.

Border protection measures in Malaysia and Powers of custom officers regarding


enforcement of IPR :
The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement),
one of the most influential IP international treaties in the world also provides for rules on civil
and administrative procedures and remedies to combat infringing and counterfeiting activities.
1 A trade description order (TDO) is a court order obtained from the High court for
a declaration that products bearing an infringing mark are a false trade description.
A TDO is useful as conclusive proof that the use of a false trade description on a
product is a use without authority.

The TRIPS Agreement further lays down that all parties should have measures taken at the
border for the suspension of counterfeit and pirated goods by the customs authorities, also
known as "Border Measures". Border Measures are to prevent the counterfeit and pirated
goods from being released into the domestic market, thus causing more damage and losses for
IP rights holders. Criminal procedures and penalties sufficient to act as a deterrent should also
be imposed.
As a result, IP legislations in member countries have been amended to adopt the provisions of
the TRIPS Agreement. In 2000, an amendment was made to the Malaysian Trade Marks Act
1972 vide the Trade Marks (Amendment) Act 2000. The provisions found under Part XIVA of
the Act provide for the intervention by the customs authorities in the enforcement of the trade
mark rights by its owners. They came into force on 1 August 2001 and denote the introduction of
Border Measures in Malaysia.
Pursuant to these provisions, customs authorities are empowered to prohibit any person from
importing counterfeit trade mark goods into Malaysia (under the new Section 70C to 70P of
the Act). This allows the customs authorities to seize goods suspected to bear infringing trade
marks at the point of entry into Malaysia and provides for the conditions and procedures to be
met.
Firstly, it must be noted that only the proprietor of a registered trade mark can invoke these
provisions.
Secondly, the goods involved must be "counterfeit trade mark goods". Under section 70C of the
Act, "counterfeit trade mark goods" has been defined to mean any goods including packaging
bearing marks which are identical, so nearly resembling or marks which cannot be distinguished
in its essential aspects from the registered trade mark; and which infringes the right of the
proprietor of the trade mark.
The procedures laid down in the Act are as follows (sec 70D sec 70P)
Application
The trade mark owner or his agent may submit an application to the Registrar of Trade Marks
stating that:

he is the proprietor of a registered trade mark

the counterfeit trade mark goods are expected to be imported at a specified time and
place; and

he objects to such importation.

Such an application must be supported by evidence identifying the goods to be seized.

Approval of Application & Security Deposit


Upon receipt of the application, the Registrar shall determine the application and inform the
applicant whether the application is approved. The approval is valid for 60 days from date of
approval.
The trade mark owner shall then deposit with the Registrar an amount of money as security
sufficient to reimburse the Government for any liability or expense likely to be incurred as a
result of the seizure. It is also to prevent abuse and to protect the importer or to pay such
compensation as may be ordered by the Court (if any).
Notification of The Customs Authorities
The Registrar shall notify the customs authorities immediately after approving the application.
Seizure & Notice of Seizure
After the seizure, the customs authorities will issue a notice of seizure to the Registrar, importer
and applicant stating that the goods have been seized and their whereabouts. A specified period
known as the "retention period" will also be stated for the applicant to institute an infringement
action. This notice is crucial because the goods will be released unless an infringement action is
brought within a time stipulated in the notice. This notice period can be extended via application
to the Registrar and not to the customs authorities.
Inspection of Goods
The importer and trade mark owners may be allowed to inspect and/ or remove the seized
goods provided the requisite undertakings are given. These undertakings are not unreasonable.
In summary, the party seeking to inspect the seized goods must return the sample and take
reasonable care in preventing damage to it. The Registrar is not liable for any damage to the
seized goods during the inspection or when removed.
Forfeiture of Goods
The importer may, by written notice to the Registrar consent to the forfeiture of the seized
goods. The Government will then dispose of such goods. Such a notice must be given before
any infringement action is instituted. This provision may be used by the importer to their
advantage at the expense of trade mark owners. Where the goods seized are perishables (e.g.
cigarettes), the importer would quickly consent to the forfeiture prior to the commencement of an
infringement action and the Government will then dispose of the seized goods upon receiving

such a notice. In essence, this amounts to destruction of evidence before legal suit can be
instituted against the importer and/or the manufacturer of the seized goods.

Release of Goods
Upon expiration of the retention period or extended period, the Registrar shall release the
seized goods to the importer if the applicant has not:

instituted an infringement action; or

given notice that such action has been instituted.

Compensation must be paid to the importer if an action is not taken within the period or no
notice was given.
If an infringement action has commenced but the trade mark owner has not obtained an
interlocutory injunction from the court to prevent the release of such goods within 30 days from
the date of commencement, the Registrar shall also release the goods back to the importer.

Powers of the custom authorities:


The competent authority for Intellectual Property Rights (IPR) enforcement in Malaysia
is the enforcement division of the Ministry of Domestic Trade, Co-operatives and
Consumerism (MDTCC). For border measure, the Royal Malaysian Customs may
enforce criminal offences for infringement of IPR under the ex-officio capacity as
provided for under the Trade Marks Act 1976. In brief, the Royal Malaysian Customs is
authorised to detain counterfeit goods at a port of entry, provided that a complaint is
lodged to the Registrar of Trade Marks by the brand owners.
There are no express provisions in the Customs Act 1967 that provides Customs officers to
prohibit the importation and exportation of counterfeit goods and the existing provisions are not
adequate for Customs to provide them with the authority to detain and seize suspected
counterfeit goods at the border. The Customs play a limited role in enforcing intellectual property
rights. Unfortunately, unlike many jurisdictions around the world, the Customs division does not
maintain a formal recordation system. It is to be noted that whilst the Customs is empowered to
seize infringing goods at port, the application must first go through the Registrar of Trade Marks.
This is a time consuming and cumbersome task. Upon notification by the Registrar, Customs
will take the necessary action to seize and detain the identified goods. If the IP owner does not
commence an action for infringement within the time period specified in the notice given by the
Customs, the seized goods will be released to the importer. The importer will then be given a
right to apply to the court for an order of compensation against the applicant.

S.31 of the Customs Act 1967 prohibits the import and export of prohibited goods. Yet,
counterfeit goods are not specifically defined as prohibited goods within the definition of the
Act. Likewise, the Customs (Prohibition of Imports) Order 1998 also does not define counterfeit
goods as one of the specified goods. There is no provision placing an obligation upon Customs
Officials to independently investigate, seize or detain consignment of suspected counterfeit
goods.
Nevertheless, there are residual powers granted to the Customs where the Customs may, on it
own initiative take ex-officio action to detain or suspend the release of goods which, based on
prima facie evidence, are counterfeit. Section 70(O) of the Trade Marks Act provides Ex-Officio
powers to the Royal Malaysian Customs (CUSTOMS) wherein any authorized officer may detain
or suspend the release of goods which, based on prima facie evidence that he has acquired are
counterfeit goods. However, there are no regulations on how CUSTOMS are to effect and action
this provision. In fact, CUSTOMS are usually not fully equipped and trained on IPR issues and
hesitate to detain goods without full cooperation and training from the brand owner.