At a time when legal costs are escalating, criminal enforcement measures in Singapore and Malaysia are remarkably easy and affordable. Gladys Mirandah and Prithipal Singh report from Singapore.
A trademark owner’s fight against the unauthorized use of its trademark does not end with registration of the trademark. Registration only confers upon the trademark owner the exclusive rights granted by law. The real challenge lies in being able to enforce one’s trademark registration against counterfeiters who blatantly persist in infringing one’s registered rights.
Whilst in most Asian jurisdictions, the trademark law generally provides both civil and criminal remedies against counterfeiting, criminal remedies are generally not adopted by most proprietors owing to the inherent difficulties in police procedures in this region. However, it seems that Singapore and Malaysia are exceptions considering that criminal procedure in enforcement of trademark rights is widely used by proprietors – and to great success.
An Overview of the Criminal Enforcement Process In Singapore and Malaysia
Applying criminal enforcement measures in Singapore and Malaysia is simple, fast and relatively inexpensive. The only prerequisites are a valid registered trademark and appointment of a local law firm holding authority on behalf of the trademark proprietor. Such authority can be provided in the form of a simple signed letter and does not require legalization or notarization.
The criminal enforcement process generally commences with field investigations or market surveys to identify sources of supply of counterfeit goods. Trap purchases are then made to garner evidence to produce before the court in support of an application for a search warrant.
This is followed by an evaluation or comparison of the differences between the genuine and counterfeit products. It is important to note that since the success of the enforcement action depends a great deal on the accuracy of the investigation results, it is prudent to devote sufficient time and resources in ensuring good quality investigations. This is discussed in more detail under the heading “Practical Concerns/Pitfalls In Applying For/Executing A Search Warrant”.
Once the intellectual property rights owner is convinced that the trap purchases are indeed counterfeits, the papers are drawn up and a complaint lodged with the court for the issuance of a search warrant authorizing the police (accompanied by representatives of the IPR owner) to raid the premises or conveyance and seize any infringing goods.
Once the seizure is done, the infringer may contact the IPR owner to settle the matter. If so, the matter is resolved and the seized goods destroyed. If not, the appropriate court action is filed and the infringer is criminally prosecuted.
Please see the flow charts below which set out the step by step procedure in Malaysia and Singapore. It will be noticed that whilst the steps are generally similar, there are differences in procedure in the two countries.