The digital era has fundamentally transformed how creative and innovative assets are produced distributed monetised and infringed. Intellectual property now exists not only in physical products books and inventions but also in digital content software online brands and user interfaces. While this transformation has created enormous opportunities for creators and businesses it has also significantly expanded the scale speed and complexity of infringement.
From the perspective of an intellectual property practitioner one of the most significant changes is that infringement is no longer local visible or episodic. It is now continuous cross border and often anonymous. This reality requires a fundamental rethinking of how legal protection operates in practice especially within the Malaysian legal framework.
The Malaysian Statutory Framework on Trademarks
The Malaysian legal framework provides a robust foundation for protection but it must now be applied in a digital context. Under the Trademarks Act 2019 trademark infringement is governed primarily by Sections 54 55 and 56 of the Act. Section 54 provides that a person infringes a registered trademark if he uses without consent a sign that is identical or similar to the registered mark in relation to identical or similar goods or services where there is a likelihood of confusion.
However, Section 102 of the Trademarks Act 2019 provides a level of protection for intermediaries. It states that an order for damages or an account of profits shall not be made against a person who is not the primary infringer if they can prove that the use of the sign was innocent and they had no reason to believe that the use constituted an infringement. This provision acts as a statutory safeguard for platforms provided they maintain their role as neutral intermediaries.
Digital Evolution of the Copyright Act
Meanwhile the Copyright Act 1987 has also evolved significantly to meet digital challenges. The introduction of the Copyright (Amendment) Act 2022 marked a pivotal shift especially through the introduction of Section 43AA which criminalises the manufacturing and selling of streaming technology for the purpose of infringement. This is further strengthened by Section 41(1)(k) which addresses the sharing of access to online locations containing pirated works.
These provisions are designed to target the facilitators of digital piracy rather than just the end users. Within this context the concept of Online Service Provider liability becomes crucial. Under Sections 43B to 43E of the Act providers enjoy safe harbour protections which indemnify them against copyright claims provided they act as neutral intermediaries and comply with the notice and take down procedure. An intermediary may lose this immunity if they have actual knowledge of the infringing activity or receive a direct financial benefit from it.
Platform Based Enforcement and Practical Hurdles
In response to the scale of online infringement major e commerce and social media platforms have developed intellectual property complaint mechanisms. Portals like the Shopee Brand Intellectual Property Portal or the TikTok Shop Intellectual Property Protection Centre allow rights holders to submit evidence of registration and request takedowns. These systems serve an important function as they provide a fast method for removing infringing content without the need for immediate court proceedings.
However these mechanisms are reactive by nature and present several practical hurdles. One major issue is the whack a mole effect where infringing listings reappear under new anonymous accounts almost instantly after a takedown. Furthermore the counter notice mechanism allows an infringer to dispute a takedown which often forces the rights holder to initiate formal legal proceedings within a very narrow window of ten to fourteen days.
Judicial Interpretation on Platform Liability
The Malaysian courts have begun to address these legal limits of platform responsibility as seen in the High Court decision of A and M Beauty Wellness Sdn Bhd v Shopee Mobile Malaysia Sdn Bhd. In that case the Court refused an injunction to compel the platform to pre screen or block listings before publication. It was held that the platform was an intermediary and not the seller of the goods.
The Court emphasised that rights holders must identify specific infringing listings and utilize the platform’s complaint mechanisms rather than seek broad platform wide injunctions. This decision reflects a judicial recognition of the technical limits of platform enforcement and a preference for targeted evidence based takedown rather than blanket restrictions on online marketplaces.
Conclusion and Strategic Outlook
The legal framework cannot remain static while infringement becomes faster and more scalable. There is a growing need for clearer regulatory obligations on digital platforms particularly regarding repeat offenders and identity verification. At the same time rights holders must adapt their own strategies because effective protection now requires a combination of registration contractual protection digital monitoring and where necessary strategic litigation.
Legal practitioners therefore play a broader role than before as they are no longer merely registrars of rights but are advisors on digital risk and evidence preservation. While the legal framework in Malaysia provides a strong foundation the realities of the digital economy demand more than formal registration and occasional reactive enforcement. Effective protection now requires continuous vigilance and a proactive legal strategy to ensure that intellectual property remains a meaningful and enforceable form of protection in this digital age.
For further information, please contact:
Ahmad Hafiz Zubir, Azmi & Associates
hafiz.zubir@azmilaw.com
