ip management in malaysia

DISSERTATION :

INTELLECTUAL PROPERTY ENFORCEMENTIN MALAYSIA

LECTURER :PN. NORHAYATI HASSAN

STUDENT :MOHAMED AZNANSHAH BIN KHALIDGP01209

PATEN PRAKTIS DAN PROSEDUR IIUUUK 5375

PAST

BEFORE INDEPENDENCE

- Prior 31 August 1957

- Most industries and factories were owned by British Companies

- Main economic activities producing rubber, tin metal and exporting sawn timber

1980s

- Major shift in the industrialization policy of Malaysia (National Industrial Policy 1983)

- Transformation from agriculture to industrial nation

- Emphasis on Heavy Industry and R&D

contd…

- Only have a Trade Mark Act 1976

- Patents and industrial designs were required to be filed, prosecuted in Britain

- Rapid development, saw the emergence of importance of IPRs

- Patent Act 1986, Copyright Act 1987, Industrial Design Act 1996, Geographical Indications Act 2000, Layout-Designs Of Integrated Circuits Act 2000

PRESENT

SEVERAL METHODS OF ENFORCING IPRs IN M’SIA:

1. Civil Action

2. Criminal Action

3. Administrative Action

CIVIL ACTION

Main objective of the civil action:

7. Injunction

To restrain the infringer from continuing the infringement activities

contd…

2. Delivery Up

Surrender all infringement products in his possession, custody or control for the purpose of destruction

3. Damages

Compensate the plaintif for the loses as a consequences of the infringement made by the defendant

contd…

4. Account of Profits

Deprive defendant profits improperly made and transfer it the plaintif

5. Public Apology

Seek a public apology for the act of infringement

HIERARCHY OF COURTS AND JURISDICTION

FEDERAL COURT

COURT OF APPEAL

HIGH COURT / IP COURT Original Jurisdiction

Final Appellate Court

Other forms for IPR disputes can be heard

1. Arbitration

Process in which the disputing parties present their case to a panel of arbitrators ) who examine all the evidence and then make a decision for the parties

2. Copyright Tribunal

Power to hear limited; disputes on payment of royalty and translation right

CRIMINAL ACTION

- FOC

- Only for infringement of copyright and trade mark (via Trade Description Act 2011)

- Responsible party :

ENFORCEMENT DIVISION of the MINISTRY of DOMESTIC TRADE COOPERATIVES AND CONSUMERISM

- The owner of IPRS / his agent / authorized representative can initiate the criminal action

contd…

COPYRIGHT ACT 1987

- Offences under Section 41

- Raid and investigation carried out by the Assistant Controller of Copyright

- Non compoundable offence

- Prosecution of criminal offence is carried out by Deputy Public Prosecutor (DPP)

- Fine:

(RM2,000 < x < RM 20,000) / infringing copy, or

imprisonment < 5 yrs, or both

contd…

TRADE DESCRIPTION ACT 2011

- Offences under Section 5

- Raid and investigation carried out by the Assistant Controller of Trade Description

- Compoundable offence

- Only registered owner of a registered trade mark under TMA 1976 can claim his rights in respect of such TM are being infringed by the course of trade

contd…

Other Legislation…

OPTICAL DISK ACT 2000

- Upstream control measure

- Licensing of the manufacturer of optical disk

- Method used:

1. SID Code

2. Exemplar Program

contd…

TRADE DESCRIPTION (OPTICAL DISK LABEL) ORDER 2011

- Downstream control measure

- The Order makes it a crime to supply an optical disk without a requisite label

- Method used:

1. Only owner/authorized personnel can apply

2. Enable consumers to identify genuine optical disk

contd…

BOARDER MEASURES

- Compliance with TRIPs Agreement (Art 51 to 60)

- Enforcement mechanism for curbing counterfeiting activities at the boarder

- Related IPR legislation :

Trade Marks Act 1976

Copyright Act 1987

Trade Description Act 2011

HIERARCHY OF COURTS AND JURISDICTION

FEDERAL COURT

COURT OF APPEAL

HIGH COURT

Original Jurisdiction

Final Appellate Court

SESSION COURT / IP COURT

contd…

COPYRIGHT ACT 1987

- Fine:

(RM2,000 < x < RM 20,000) / infringing copy, or

imprisonment < 5 yrs, or both

TRADE DESCRIPTION ACT 2011 & TRADE DESCRIPTION (OPTICAL DISK LABEL) ORDER 2011

- Fine:

Body Corporate : < RM 250,000)

Not Body Corporate : < RM 100,000) or imprisonment < 3 yrs, or both

contd…

OPTICAL DISC ACT 2000

- Fine:

Body Corporate : < RM 500,000)

Not Body Corporate : < RM 250,000) or imprisonment < 3 yrs, or both

ADMINISTRATIVE ACTION

- MOU between the government and large shopping mall

- To include a clause in tenancy agreement:

“ the tenancy of the shop lot will be terminate if the shop is found guilty of dealing with counterfeit goods.”

FUTURE

Difficulty in tracking infringement/counterfeit productsIssues in Copyright Piracy

1. Internet based piracy2. Mobile piracy3. Camcorder piracy

Copyright (Amendment) 20111. Technological Protective Measure2. ISP procedure3. Anti-Camcording

contd…

Organized crime

- Large scale illegal commercial organization

- Government should employ Anti-Money Laundering and Anti-Terrorism Financing Act 2001 (AMLATFA)

irfanaqil2@gmail.com.my