Section 136 (2) of the Trademarks Act 2019 (“Act”) grants the Controller with the power to compound offences under the Act. In essence, compounding means payment as a settlement in lieu of prosecution of an offence.
Further, section 136 (1) of the Act empowers the Minister to make regulations pertaining to compounding with the approval of the Public Prosecutor.
Pursuant to this, the Trademarks (Compounding of Offences) Regulations 2020 [P.U. (A) 252/2020] (“the Regulations”) was published on 28 August 2020. It sheds further details on what are the compoundable offences, and the procedures involved in respect to compounding under the Act.
The First Schedule under the Regulations sets out compoundable offences under the Act, which are:
- Counterfeiting a registered trademark — section 99 (1);
- Falsely applying a registered trademark to goods or services — section 100 (4);
- Making or possessing an article used for or in the course of committing an offence against sections 99 and 100 — section 101;
- Importing or selling, etc, goods with falsely applied trademark — section 102 (1);
- Making or causing to be made a false entry to the Trademarks Office or in the Register — section 103;
- Falsely representing a trademark as registered — section 104 (1);
- Offence relating to disobedience to summons or refusal to give evidence - section 105 (2);
- Falsely representing trademark as a protected international registration designating Malaysia — section 106 (1);
- Misuse of title “Trademarks Office” — section 107;
- Unregistered persons practising, etc, as a registered trademark agent — section 108;
- Non-compliance with the directions made by the Assistant Controller in respect of provision of information — section 113 (5);
- Disclosure or use of confidential information or document — section 115 (1);
- Giving false or misleading information, evidence or document — section 117;
- Destruction, concealment, mutilation and alteration of records — section 118;
- Tipping off an investigation which is being or is about to be conducted for the purposes of the Act — section 124 (1);
- Obstruction of entry — section 131; and
- Non-compliance with guidelines or practice directions by the Registrar — section 160 (6) (b).
The Controller may only compound the above offences with the written consent of the Public Prosecutor. If such consent has been obtained, the Controller may at any time before a charge is being instituted (after the compoundable offence has been committed but before any prosecution for it has been instituted) make an offer to compound.
Such an offer must be in written form and is to be made to the person reasonably suspected of having committed the compoundable offence. The quantum of compound must not exceed 50% of the maximum fine for the relevant offence.
Further, such offer to compound is for a period of 14 days or such extended time as the Controller may grant.
If the person to whom an offer to compound is made accepts such offer, payment may be made either in cash, by money order, postal order, bank draft or through an electronic fund transfer.
If the amount specified in the offer of compound is not paid within the time so specified in the offer or such extended time as the Controller may grant, prosecution for the offence may be instituted at any time after that without further notice.
Once the offence has been compounded, no prosecution shall be instituted in respect of the offence against the person to whom the offer to compound was made.