Trademark counterfeiting :comparative legal analysis on enforcement within Malaysia and the United Kingdom and at their borders

Abstract

Trademarks play an important role in conveying reliable information to consumers about the quality of goods and the manufacturer’s reputation. Counterfeiting can destroy these important benefits. Despite difficulty in quantifying its scope and effects, many studies recognise the global prevalence of counterfeiting. Its invasion across product categories harms legitimate producers, economies and society. While there are many contributing factors to its proliferation, the only real area where a government can make a difference is in setting up a responsive legal system that includes good enforcement against counterfeiting. This study aims to address that need by examining comparatively how the relevant intellectual property laws can be used as effective enforcement mechanisms in Malaysia and the UK. The importance and, effectiveness of and key obstacles in judicial proceedings and border measures in both countries are examined and analyzed, using a combination of comparative, doctrinal and socio-legal research. The data used derives from relevant legislation, case law, legal literature and public domain statistics. These sources are supplemented and corroborated by interviews with key figures (official, judicial, practitioner) in Malaysia and Europe. This study draws the following conclusions: (1) Civil proceedings in both countries are comprehensive but the responsible authorities need to review litigation costs to ensure the effectiveness of civil remedies. Malaysia should explicitly provide for remedies in its Trade Marks Act 1976. (2) In criminal actions, forfeiture of assets obtained through counterfeiting activities could be the most effective form of punishment and deterrence, coupled with the use of officers experienced in handling prosecutions. (3) Compared to judicial proceedings, border measures could be the most effective mechanisms in preventing the proliferation of counterfeit goods, but close co-operation and effective communication between rights-holders and customs authorities are crucial in this regard.