IPR Enforcement
What We Do
KASS: Expert IP Rights Protection in Southeast Asia
At KASS, we provide expert guidance in managing and protecting your Intellectual Property Rights (IPR) across Southeast Asia. From trademarks and patents to copyrights and industrial designs, our dedicated team ensures your intellectual assets are fully safeguarded against infringement. Trust us to navigate the complexities of IP law so you can focus on what you do best—innovating and growing your business.
Frequently Asked Questions
For certain IPRs (i.e., for trademarks, designs or copyright), it is easier to spot an infringement – all you need to do is to look out for items in the market that are identical or very similar to yours. For a more comprehensive survey, you may want to conduct market research to ascertain the nature and the extent of the infringement. Expert help may be needed to establish if a patent had been infringed, especially if the patent in question is a complicated one. For wrongful registration of trademarks, local or international watching services can be utilized to monitor the journals or gazettes of accepted trademarks. The watching services will alert you of any attempt by a third party to register your trademark.
You first need to understand where you stand legally. Are you in a position to take legal action? And if you are, what legal actions can you take? An adequate level of intellectual property awareness will certainly prove useful in this situation. It should be noted that the legal recourse available to IPR owners are different depending on whether the IPRs are registered. In most cases, it is customary that a letter of demand (LOD) or a cease and desist (C&D) letter is sent to the infringer. Although the terms and the demands of the letter may be different, the essence of it is to demand that the infringer stop using your IP.
If the infringer refuses to budge then you may choose to commence civil proceedings in the courts against him/her to protect your IPR. If there is a need to stop the infringing act immediately, you may apply to the court for an interim injunction to stop the use of your IP while awaiting trial.
Yes, you may lodge a complaint at the Enforcement Division of the MDTCC if your registered trademark or your copyright has been infringed by another party in Malaysia. The Enforcement Division will conduct raids and seize the offending items, after which it will decide on whether to press charges against the infringer in court.
The Government is committed to eradicating the production of counterfeits in the country. The Optical Discs Act 2000 establishes a licensing and regulatory framework for all activities which are related to the manufacture of optical discs. A Special Copyright Task Force was set up in 1999 by the Ministry of Domestic Trade and Consumer Affairs (now MDTCC) to curb copyright piracy.
In Malaysia, an IPR owner may rely on border measures to prevent counterfeit goods from being imported into the country. The IPR owners would have to apply through the Registrar of Trademark, who in turn will notify the customs authorities to seize the shipment of counterfeit goods. However, the owners will have to provide specific details of the shipment including details of the importer, the registration number of the vehicle/aircraft/ship and the place where the goods would be arriving. Further, after the goods are seized the IPR owners will have to obtain the court order preventing the release of the goods to the importer within 30 days from the date the civil suit commenced, failing which the goods will be returned to the importer and the importer may then sue for damages.
If the trademark has been filed but has yet to be registered, then you may oppose the registration of the mark by filing a Notice of Opposition when the trademark is published in the gazette. In Malaysia there is a 2-month window from the date the mark is gazetted for any interested party to oppose the registration of the mark.
If the trademark is already registered, you will have to file a revocation application at the High Court to remove the trademark from the Register.