What Counterfeiting Actually Covers Under Malaysian Law
The word "counterfeit" is used loosely in everyday conversation to describe any fake product. Under Malaysian law, the precise legal category matters because different statutes apply and different remedies follow from each.
Trademark counterfeiting is the most commonly prosecuted form. Under the Trade Marks Act 2019, it is a criminal offence to apply, sell, expose for sale or possess for trade or manufacture any goods bearing a counterfeit registered trademark. The definition of a counterfeit mark under the Act is a sign that is identical to, or so nearly resembling a registered mark that it is likely to be mistaken for it, applied without the consent of the owner. Criminal liability extends beyond the manufacturer to the importer, distributor and retailer. Fines and imprisonment are available penalties, and repeat offenders face enhanced sentences.
Copyright piracy occupies adjacent territory. The Copyright Act 1987 makes it a criminal offence to make, import, sell or distribute copies of copyrighted works where the person knows or has reason to believe the copies are infringing. This covers pirated software, films, music and books, as well as counterfeit packaging that incorporates protected artwork or labelling.
The Trade Descriptions Act 2011 captures a broader category of misleading commercial conduct, including false claims about a product's origin, composition or quality and is enforced by the Ministry of Domestic Trade and Cost of Living. Where counterfeit goods are also misdescribed, both the Trade Marks Act and the Trade Descriptions Act may apply simultaneously.
Criminal Enforcement: How a Raid Actually Works
The most immediate tool available to a brand owner who has identified counterfeit goods in the market is a complaint to the enforcement division of the Ministry of Domestic Trade and Cost of Living, known as KPDN. This is the primary domestic enforcement agency for trademark counterfeiting. Officers have the power to enter premises, search for and seize counterfeit goods and detain suspects for investigation. The process does not require a court order to initiate, and a well-prepared complaint can produce a raid within days.
To make a complaint effective, the brand owner needs to provide evidence that the goods in question are counterfeit rather than merely similar. This means submitting authenticated samples of genuine goods for comparison, documentation of the registered trademark and its ownership, a statutory declaration from a person authorised to verify authenticity and specific intelligence about the location and nature of the suspected counterfeiting operation. Vague complaints without supporting documentation tend to produce slow or no response.
KPDN officers can seize goods and arrest suspects, but prosecution is handled by the Public Prosecutor. The brand owner is a complainant in criminal proceedings, not a party. This means the outcome is not directly within the brand owner's control once the complaint has been lodged. If the prosecution is not pursued with the urgency the brand owner needs, parallel civil action may be necessary.
"Criminal enforcement removes counterfeit goods from the market quickly. Civil enforcement is what secures compensation and orders that protect the brand going forward."
The Royal Malaysia Police also has jurisdiction over trademark offences and may be engaged where the counterfeiting operation is linked to organised criminal activity. Customs authorities act separately on imports at the border. Each agency operates within its own mandate, and coordinating across multiple agencies for a large-scale counterfeiting operation requires deliberate effort from the brand owner's side.
Border Measures: Stopping Counterfeits Before They Reach the Market
The Trade Marks Act 2019 provides a border seizure mechanism that allows trademark owners to request that customs authorities detain suspected counterfeit goods at the point of import or export. This is one of the most efficient tools for brand owners who know their counterfeits are being manufactured offshore and imported in volume.
To use the border measure process, the brand owner must lodge a notice with the Director General of Customs, providing details of the registered trademark, information that allows customs officers to identify the genuine goods and the grounds for suspecting an imminent importation of counterfeits. Once the notice is accepted, customs officers can detain suspected shipments for a defined period, during which the brand owner is notified and given the opportunity to confirm whether the detained goods are counterfeit.
If the goods are confirmed as counterfeit, forfeiture and destruction proceedings can follow. If the brand owner does not respond within the specified period, or if the goods turn out to be genuine or authorised, the shipment is released. The mechanism requires the brand owner to act promptly once a detention notice is received, and maintaining a current and properly filed notice is a prerequisite for accessing this remedy at all.
For brand owners whose products are exported from Malaysia and counterfeited in other markets, the export side of the border measure is available but less commonly used. The practical focus tends to be on inbound shipments where the Malaysian market is the end destination.
Civil Remedies: What Courts Can Order
Civil litigation for trademark infringement and counterfeiting runs in parallel with criminal enforcement and offers remedies that the criminal process cannot provide. The primary civil remedies available in the High Court are:
- An interim injunction restraining the defendant from continuing to deal in counterfeit goods pending the outcome of the case. This is often the most urgent remedy because it stops the harm immediately. The threshold for an interim injunction is whether there is a serious question to be tried, whether damages would be an adequate remedy if the injunction were refused and where the balance of convenience lies.
- A final injunction making the restraint permanent on the conclusion of the proceedings.
- Damages or an account of profits, at the brand owner's election, made by the defendant from the infringing activity. The election is made after liability is established, allowing the brand owner to take whichever is greater.
- Delivery up and destruction of the counterfeit goods and any materials used in their manufacture.
- Orders for costs against the defendant.
Where the identity of the counterfeiter's supplier or distributor network is unknown, a Norwich Pharmacal order can be sought against third parties, such as logistics companies or market operators, who are innocently mixed up in the wrongdoing and hold relevant information. This order compels disclosure of names and addresses that would otherwise be unavailable to the brand owner.
Anton Piller orders, known under the Rules of Court 2012 as search orders, allow the brand owner to search the defendant's premises and seize evidence before the defendant has the opportunity to destroy it. These are granted ex parte in cases where there is a real risk that evidence will be removed or destroyed if notice is given, and they can be combined with a freezing order over the defendant's assets where there is a risk of dissipation.
Online Counterfeiting: Platforms and Takedowns
A significant portion of counterfeit trade in Malaysia now operates through e-commerce platforms, social media and messaging applications. The enforcement framework for online counterfeiting is less developed than for physical goods, but the available tools are expanding.
Most major e-commerce platforms operating in Malaysia, including Shopee, Lazada and TikTok Shop, maintain brand protection programmes that allow registered trademark owners to submit takedown requests for listings that use their marks without authorisation. These programmes vary in their effectiveness and response time, but they represent the fastest available remedy for individual counterfeit listings. A takedown removes the listing; it does not prevent the same seller from relisting under a different account, which is why sustained monitoring is necessary.
Where a platform repeatedly hosts counterfeit listings despite notices, or where the platform operator is complicit in the infringement, civil action against the platform may be available. Malaysian courts have not yet produced a settled framework for platform liability in the context of trademark counterfeiting, and this remains an evolving area. The Communications and Multimedia Act 1998 and the developing case law on intermediary liability both bear on the question. For sellers and marketplaces specifically, see our companion article on protecting your brand in Malaysia's e-commerce boom.
For social media accounts operated by counterfeiters, takedown requests can be submitted to the platform under their respective terms of service. Where the account is operating from within Malaysia and the infringement is systematic, a police report combined with a formal takedown request tends to produce better outcomes than a platform request alone.
Building an Enforcement Programme That Works
Brand owners who react to individual counterfeiting incidents as they arise tend to find that enforcement is expensive and the counterfeits return quickly. A more effective approach is to build a structured enforcement programme that combines monitoring, complaint filing and civil action in a way that raises the cost and risk for counterfeiters over time.
The foundation of any enforcement programme is a proper IP register: all trademarks, copyrights and industrial designs should be registered, properly recorded at MyIPO and kept current. A brand owner who cannot quickly produce a certificate of registration, an authenticated specimen of the genuine product and a clear chain of title in the mark will struggle to move quickly when counterfeits appear. A registered mark is the starting point for every remedy above; see our complete guide to trademark registration in Malaysia for how to get one in place.
Regular market monitoring, whether through in-house teams, private investigators or online monitoring services, allows brand owners to identify counterfeiting operations early. Early detection preserves more enforcement options and tends to result in smaller operations that are easier to shut down cleanly. Counterfeit operations that are allowed to grow become harder to address and more likely to relocate or reconstitute after a raid.
Where the volume of counterfeiting justifies it, a coordinated enforcement day, in which multiple raids are conducted simultaneously across different locations, prevents counterfeiters from warning each other and relocating stock. This requires close coordination with KPDN and careful advance preparation, but produces better outcomes than sequential raids that allow the operation to move.
Key Statutory References
- Trade Marks Act 2019, Part XV (sections 99 to 102): criminal offences for counterfeiting a trademark, falsely applying a registered trademark to goods or services and manufacturing, importing or selling goods bearing a falsely applied mark.
- Trade Marks Act 2019, Part XIII (sections 81 to 88): border measure provisions allowing customs detention, security, storage, notice and forfeiture or release of suspected counterfeit imports.
- Copyright Act 1987, sections 41 to 43: criminal offences for copyright piracy, including manufacture, importation, distribution and sale of infringing copies.
- Trade Descriptions Act 2011: offences relating to false trade descriptions, applied and enforced by KPDN alongside trademark provisions.
- Rules of Court 2012, Order 29: interim and interlocutory injunctions, including Mareva (freezing) orders. Order 29A: Anton Piller orders (search orders) for the preservation of evidence.
This article provides general information only and is not legal advice. Enforcement strategy is fact-specific; please consult a qualified IP practitioner about your particular brand and circumstances.
