7 April 2018 Brain Law Partner, Regional Head of IP

Online Counterfeiting Enforcement

Agenda For Today’s Presentation Online Counterfeiting in Malaysia General Overview of Online Counterfeiting in Malaysia Relevant Laws Solutions to Online Counterfeiting Challenges Case Study

Online Counterfeiting General Overview of Malaysia’s Online Environment E-commerce in Malaysia is growing at a steady rate since its boom in the mid 2000s. As of 2017, the E-commerce industry in Malaysia is worth RM 24.6 bil. – (TheStar) E-commerce in Malaysia is expected to grow with the formation of the Digital Free Trade Zone (“DTFZ”) in cooperation with Jack Ma and Alibaba. Please see: https://www.thestar.com.my/business/business-news/2017/08/17/malaysias-e-commerce-industry-now-a-rm24pt6bil-business---iprice/ https://www.digitalnewsasia.com/digital-economy/2017-e-commerce-review-Malaysia

Online Counterfeiting General Overview of Malaysia’s Online Environment Counterfeiting in Malaysia Counterfeit goods in general has been on the decline in Malaysia. However, Malaysia lost close to RM 8 billion per year due to illicit trade. Counterfeit goods has now shifted online and presents a challenge to authorities because online goods are brought in small packages and hard to trace. Please see: http://www.theborneopost.com/2018/03/23/more-private-public-sector-efforts-needed-to-curb-illicit-trade/ Use Insert tab, Header & Footer to change this text, then Apply to All to change on all slides

Online Counterfeiting General Overview of Malaysia’s Online Environment Popular E-Commerce websites in Malaysia:

Online Counterfeiting Relevant Laws Dealing with Online Counterfeiting Trade Description Act 2011 Copyright Act 1987 Trade Marks Act 1976 The Communications and Multimedia Act 1998 Consumer Protection Act 1999

Online Counterfeiting Efforts to Curb Counterfeiting Online E-Commerce platforms has set up complaints platforms for brand owners or users to report any counterfeits products on their platform. The Ministry Domestic Trade, Cooperatives and Consumerism (“MDTCC”) has established a specialised IP enforcement forensic unit to monitor websites which offer online counterfeit and pirated materials. Please see: http://www.worldtrademarkreview.com/Intelligence/Anti-counterfeiting/2017/Country-chapters/Malaysia

Online Counterfeiting Efforts to Curb Counterfeiting Online The MDTCC established the Basket of Brands programme in 2011 to give trade mark owners which register their brands with the MDTCC priority with regards to the initiation of enforcement actions and the prosecution of trade mark infringement case through the implementation of a central database. Please see: http://www.worldtrademarkreview.com/Intelligence/Anti-counterfeiting/2017/Country-chapters/Malaysia

Online Counterfeiting Further Solutions to Curb Online Counterfeiting Parties Solutions Site, Platforms & Portals Develop internal corporate policies to deter infringement Incorporate certification badges or trust marks Adopt Notice and Takedown policy Outline clear Terms of Service in prohibiting use of site/platform to sell counterfeit goods Encourage strong enforcement of the Terms of Service between site/platform owners and traders Implement regular due diligence checks on the site/platform by owners Adopt appropriate risk management tools to identify potential red flags Please see: https://cdn.iccwbo.org/content/uploads/sites/3/2015/03/ICC-BASCAP-Roles-and-Responsibilities-of-Intermediaries.pdf

Online Counterfeiting Further Solutions to Curb Online Counterfeiting Parties Solutions Infrastructure Providers (i.e. ISP) Adopt Notice and Takedown policy Establish due diligence controls by Internet Hosting Providers Develop and enforce clear Terms of Service. Encourage and develop risk indexing services Site blocking Search, Online Advertisers and Payment Processors Search engine rank demotion Key-word blocking in autocomplete Adopt anti-counterfeit advertising policies De-rank and de-index overwhelmingly infringing sites Please see: https://cdn.iccwbo.org/content/uploads/sites/3/2015/03/ICC-BASCAP-Roles-and-Responsibilities-of-Intermediaries.pdf

Online Counterfeiting Potential Challenges Platforms might be overwhelmed by the amount of complaints. Lack of control of infringers. Costly and time consuming to implement policies or reach out to enforcement officers. Difficulty in getting brand owners and platform officials to cooperate.

Online Counterfeiting Case Study mudah.my example: All parties should come together to discuss ways to combat online counterfeiting (platform owners, brand owners, enforcement bodies & lawyers). Effective in combating online counterfeiting if everyone work together and have open and frank discussion. Build relationships between parties to fully combat online counterfeiting.

Questions?