ARE BRANDED FUNERAL GOODS COUNTERFEITS?
Updated: May 26, 2022
At first glance, Chan seems an unassuming man. Most days, you’ll find him sitting in his workshop, toiling away in his sweat-stained singlet and olive-green shorts. In fact, Chan is a maker of luxury goods, and his small poorly lit workshop is filled to the brim with the must-haves of the day. The latest Apple products, designer bags and shoes, flatscreen TVs, European sportscars, and hanging from the ceiling, the workshop’s crowning glory - a Boeing 787 Dreamliner. They are all fakes of course, and perhaps in more ways than one. And don't even bother asking Chan about after sale services.
Yes, the LV bags, the Gucci heels, and the Bugattis you've been sending to granny are fakes, not just because they're made of paper and bamboo, but they could also be considered as counterfeit goods. In 2011, A New York Chinatown shopkeeper was arrested for selling “counterfeit” Burberry, Gucci, and LV “bags” meant for funeral offerings. In 2016, GUCCI sent warning letters to several Hong Kong funeral goods shops for using selling GUCCI branded “bags”, before it was forced to apologise for not being sufficiently sensitive to the local cultures.
So what’s the legal position in Malaysia in relation to these branded funeral goods? Under the Malaysian Trademarks Act 2019, these products may be considered (i) infringing goods, and/or (ii) counterfeit goods. While all counterfeit goods are infringing goods, not all infringing goods are counterfeit goods. The difference is crucial as the making and selling of counterfeit goods is a criminal offence which can come with a hefty fine (up to RM 1million) and can also land one in prison for up to 5 years.
Under the Section 54 of the Malaysian Trademarks Act 2019, there are 2 ways in which you can infringe a registered trademark.
Firstly, a person is said to have infringed a registered trademark if “he uses a sign which is identical with the trademark in relation to goods or services which are identical with those for which it is registered, in the course of trade, without the consent of the registered proprietor.”
Secondly, a person is said to also have infringed a registered trademark if, “without the consent of the proprietor of the trademark, he uses in the course of trade a sign— (a) that is identical with the trademark and is used in relation to goods or services similar to those for which the trademark is registered; or (b) that is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered, resulting in the likelihood of confusion on the part of the public”.
Here’s a quick example of how that works. If GUCCI has registered its “GG” logo as a trademark in Malaysia for handbags, I would have infringed GUCCI’s trademark if:-
(i) I made or sold handbags bearing an identical “GG” logo;
(ii) I made or sold similar products (e.g. paper bags) bearing an identical “GG” logo, and consumers mistakenly think my products are made/licensed by GUCCI; or
(iii) I made or sold handbags bearing a similar logo (e.g. “GC”), and consumers mistakenly think my products are made/licensed by GUCCI.
In Chan’s case, his products would be considered infringing goods, if the trademarks that appear on them are registered for paper products (fairly likely) or if the consumers somehow mistake his products as those that are made/licensed by the trademark owners (not as likely).
Under Section 6 of the Malaysian Trademarks Act 2019, a product is considered “counterfeit goods” if it is branded with a registered trademark without the consent of the trademark owner and the product is falsely represented as a genuine product of the trademark owner.
Basically, counterfeit goods are infringing goods that are made with the intent to trick the public into thinking that they are the genuine article. A simple example would be me selling you a near or exact replica of a Burberry bag.
Chan’s products are unlikely going to be considered counterfeit goods as there is a general understanding that his products are fakes, in the sense that they are not meant to be used (at least not by the living) and that they are not the genuine article. Unless of course these brands plan to add funeral goods to their offering. But for now, Chan isn’t overly worried, with the Qingming festival around the corner, all his goods will go up in flames, and it will be up to the lawyers down there (I heard there are many) to sort it out.