1. 7 April 2018
Brain Law
Partner, Regional Head of IP

2. Online Counterfeiting
Enforcement

3. 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

4. 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:

5. 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:
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6. Online Counterfeiting
General Overview of Malaysia’s Online Environment
Popular E-Commerce websites in Malaysia:

7. 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

8. 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:

9. 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:

10. 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:

11. 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:

12. 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.

13. 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.

14. Questions?