Because of the firm’s experience as a commercial litigation firm for business organisations, we have a knack for advising corporate clients to pre-empt problems and disputes.
Intellectual Property Litigation
Intellectual Property Litigation is sometimes viewed as a specialist area of Civil Commercial Litigation. It entails the protection of intellectual property rights as well as the recovery of losses for intellectual property theft. Intellectual Property Litigation involves inter alia the protection of trademark and copyright, patent infringement, passing off, pirating and counterfeiting.
Your registered trademark is infringed when the infringer uses identical or similar marks without your consent or authorisation (see Section 38 of Trade Marks Act 1976). Trademark infringement will only take place when the trademark is registered under Intellectual Property Corporation Malaysia (MyIPO).
As far as copyright infringement is concerned, your copyright is infringed when the infringer makes unauthorised copies of work belonging to you as owner. Copyright infringement occurs when the infringer is selling or dealing or exhibiting the product without the consent or license of the owner (Section 36 of Copyright Act 1987). Similarly, the copyright also has to be registered under MyIPO in order for an owner to take legal action against the infringer for a copyright infringement.
Your patent is infringed, when the infringer is selling or dealing or exhibiting the invention, technology or process without your consent or license (see Section 58 of the Patent Act 1983). Set out below are the 3 exclusive rights that are conferred to a proprietor of the patent:
- To exploit the patented invention.
- To assign or transmit the patent.
- To conclude license contracts.
The infringer will be liable for patent infringement if such wrongdoer infringes either one of the exclusive rights mentioned above without your consent.
Passing off is a tortious act. Passing off may take place when a trader’s product or services has caused confusion with those of the owner’s product or services to the public during the course of trading. It is common for the owner to commence a passing off action against the infringer even if the owner's trademark is not registered.
In a passing off action, there are few key points that the owner needs to show in order to prove the infringement. Set out below are these elements:
- The owner of the trademark has goodwill or reputation.
- The owner's name or get-up is distinctive to the public.
- The use of the mark of the defendant (the infringer) is likely to deceive or confuse the public that the infringing mark is connected or associated with the plaintiff.
- The plaintiff (the owner) will or is likely to suffer damage as a result of the defendant's infringement act.
If your goods or products have been pirated or counterfeited, set out below are the steps you should take to protect your rights:
- Set up a passing off trap. The easiest way to do so is to contact the infringer and order or purchase the counterfeit goods, whilst recording or documenting the purchase.
- Commence an action in the High Court against the infringer and apply ex parte for the following pre-emptive remedies:
Please see topic on Injunctions & Pre-emptive Reliefs for further details.
- Lodge a complaint or report with MyIPO.
- Organise an intellectual property raid with MyIPO officer together with your lawyers to serve and execute the Anton Piller Order and other pre-emptive remedies.
- Enforce the pre-emptive remedies, in particular the parts of the injunction ordering discovery. This will lead to freezing and discovering of assets, money and other infringers, if any.
- Go through the court process and obtain orders to prevent and restrain further infringement and recover damages.
A registered owner of the Intellectual Property (IP) rights may initiate civil action against the infringer when there is an infringement of the IP rights.
The remedies you may be entitled to are as follows:
- Final or perpetual injunction - to prohibit further infringing actions.
- Damages - it is compensatory in nature and the amount is based on the net profit derived from the infringing actions.
- Order of an account of profits - to recompense the plaintiff where the defendant has been making profits from the infringing activities, which the defendant would not have otherwise made.