Malaysian Intellectual Property – Dawn of a new Age

Teh Hong Koon highlights the recent developments in Malaysian intellectual property laws

 

 

On 27 April 2007, the Malaysian Government launched the National Intellectual Property Policy (NIPP), announcing to the world its intention to harness intellectual property (IP) as a new engine of growth to enhance the country’s economic and social prosperity with a view to achieving the 2020 Vision of a developed nation.

 

The NIPP sets the blueprint for policies and directions to be taken by all stakeholders down the stream of IP chain activities in providing a healthy and vibrant IP environment that facilitates and promotes the creation, acquisition and exploitation of IP; and strengthens the IP enforcement system. To achieve these ends, various mechanisms have been activated and many more with far-reaching effects are in the pipe-line.

 

This article will focus on two key areas, namely the revamp and improvement of IP infrastructure and legislative reforms.

 

 

 

REVAMP AND IMPROVEMENT OF IP INFRASTRUCTURE


 

Intellectual Property Courts

Malaysia took a giant leap towards providing a more efficient IP enforcement system with the establishment of the Intellectual Property Courts (IP Courts) in July 2007, making Malaysia one of the first countries in the region to have specialized courts to dispose of IP cases.

 

There are currently 15 Sessions Courts with criminal jurisdiction to deal primarily with counterfeiting and piracy cases and 6 High Courts with both civil and appellate jurisdictions. It is reported that the IP Courts have successfully disposed of almost 70% of registered IP cases in 2008, a significant improvement as compared to about 15% in the previous year.

 

 

 

Stepping-up Efforts in IP Enforcement

Hot on the heels of creation of the IP Courts, a Special Task Force on Counterfeiting and Piracy was created within the Enforcement Division of the Ministry of Domestic Trade, Cooperatives and Consumerism (MDTCC) to strengthen the IP enforcement mechanism. They have been tasked to work closely with other government agencies such as the police, customs, Attorney-General’s Chambers and the Malaysian Intellectual Property Corporation (MyIPO) to spearhead IP enforcement actions.

 

There is also collaboration between the Business Software Alliance (BSA) and MDTCC in the implementation of the “Tulen Patrol” campaign whereby random checks are carried out at business offices for the use of illegal software. It has been reported that in 2009 alone, 24,000 warning letters were issued in relation to the use of pirated software.

 

 

 

Increased Efficiency at MyIPO

 

MyIPO, the custodian of IP registration in Malaysia, has introduced several measures to increase its efficiency, including the employment of more examiners and introduction of on-line filing systems for trade marks and patents. These measures have resulted in a significant reduction in the time frame for IP registration and in clearing the backlog of past years.

 

 

 

 

LEGISLATIVE REFORMS

 

The topic on every IP practitioner’s lips is the impending amendments to IP legislation. The Director General of MyIPO, Encik Kamel Mohamed, has at recent conference announced that most, if not all IP legislation will be overhauled.

 

Trade Marks

The Trade Marks Act 1976 which is modeled after the United Kingdom Trade Marks Act 1938 will undergo a transformation. One of the highly anticipated changes is the introduction of non-traditional trade marks such as sounds, colours, smells, taste and textures or a combination of two or more of these elements.

 

Another interesting change could be the introduction of provisions for the creation, recording and enforcement of trade mark as security interests. Currently, the recording of security interests for trade marks is done by filing a memorandum with MyIPO. This change should be welcomed not only in respect of trade marks but IP generally as it is an undisputable fact that IP rights are increasingly valuable assets which can be used by their owners as collateral to raise financing.

 

Trade mark owners, especially the big players, would also be interested in seeing that a system be put in place for the registration of well-known trade marks. Currently, such registration is unavailable and the proprietor of a well-known trade mark must resort to Regulation 13B of the Trade Marks Regulations 1997 to oppose the registration of its mark by third parties. The proprietor is presently required to satisfy the Registrar that its mark is well-known based on the criteria set out in the Regulation, namely the degree of recognition of the mark in the relevant sector of the public; the duration, extent and geographical area of use and promotion of the mark; the duration and geographical area of registration, successful enforcement of the mark and the value associated with it.

 

A much welcomed move would be a reduction of the red-tape for border measures to stop the importation of trade mark-infringing goods. Currently, an application must be made to the Registrar of Trade Marks who, after considering the application, will refer the matter to the Customs Department. The requirement that the registered proprietor furnish details of the shipment which in most cases cannot be identified with precision has to an extent deterred the use of border measures.

 

It is anticipated that amendments to border measures will enable applications to be filed directly with the Customs Department. It remains to be seen if the new border measures will extend to goods in transit and copyright-infringing or patent-infringing goods.

 

 

Copyright

At the forefront of the copyright review is a proposal to make business premise owners liable for infringing activities carried on in their premises, irrespective of whether they occupy the premises. If this proposal is successful, it may eventually be extended to other forms of IP.

 

It has been proposed that action be taken against individuals who own illegal CDs, VCDs, DVDs, even if they own only one copy for private use. This could be an extreme move given that costs of enforcement may be prohibitive. The Government should instead step-up enforcement action against those responsible for the production and distribution of pirated discs.

 

It is possible that an exception will be introduced to the infringement provisions of the Copyright Act 1987 whereby the Ministry of Education will be permitted to publish books in Braille and audio books for the benefit of the visually impaired and the physically challenged, if the publishers find it unprofitable to undertake such publication.

 

Presently, an Internet Service Provider (ISP) is jointly-liable with the users who upload infringing materials on the internet even where the ISP is unaware of the existence of the infringing materials. It appears that an amendment will be introduced to enable an ISP to avoid liability if it takes action to remove the infringing material upon being informed of the infringing act. It remains to be seen whether the ISP will be required to discontinue internet access to repeated offenders.

 

It has been announced that plans are afoot to enhance the jurisdiction of the Copyright Tribunal to that which is similar to the Consumer Claims Tribunal. This would be a move in the right direction as the Copyright Tribunal provides a cheaper, less formal and more expeditious alternative to IP Courts as a means of resolving IP disputes.

 

 

 

Patents

 

In the sphere of patents, steps may be taken to codify the provisions of the Patent Cooperation Treaty (PCT) to give full effect to PCT which was acceded to by Malaysia on 16 May 2006. Effective 16 August 2006, PCT applications can be filed by nationals or residents of Malaysia with MyIPO or the International Bureau of the World Intellectual Property Organization, acting as the Receiving Office.

 

The Patents Act 1983 may also extend provisions on biotechnology and creation of a deposit library for microorganisms where the sample deposited will be made available for inspection after the expiration of the patent. With regards to the exclusion from patentability, it would be interesting to see if the Government will maintain the current list of specific-excluded subject matters or adopt the exclusions based on public interest considerations, in particular public order, morality and the protection of human life and health as defined in Article 27.2 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).

 

 

Industrial Designs

 

As for industrial designs, there are proposals to amend the definition of a design and the standards of its registrability. In particular, the requirement for eye appeal will be made redundant. This change is long overdue and hopefully, will put an end to the anomaly between Sections 7(5) and 7(6) of the Copyright Act 1987 and Sections 13A, 13B and 13C of the Industrial Designs Act 1996 in respect of the nature and period of protection accorded to designs.

 

 

New IP related Legislation

Above all, it is anticipated that legislation will be introduced to regulate competition, personal data protection, the use of traditional knowledge and folklores and access and benefit sharing for the use of genetic resources.

 

 

 

 

CONCLUSION

The Malaysian government has taken affirmative actions to improve the IP landscape in Malaysia. On the legislative front, many exciting changes are on the horizon. This clearly demonstrates the leadership’s recognition of the importance of IP in this global economy and Malaysia’s commitment in making IP a catalyst for the nation's economic and social growth.

 

TEH HONG KOON ( This e-mail address is being protected from spambots. You need JavaScript enabled to view it )

 

An earlier version of this article was published in the "2010 Intellectual Property Digital Guide" on executiveview.com

 
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