1. IPR REGIONAL WORKSHOPDEVELOPMENT OF ENFORCEMENT REGIMERTC JAPAN 11-14 SEPT 2012BY ZAKARIA YUSUFFSTATE DEPUTY OF CUSTOM(ENFORCEMENT DIVISION) ROYAL MALAYSIA CUSTOM

2. ROYAL MALAYSIAN CUSTOMSDEPARTMENT 3. DETAILS OF ROYAL MALAYSIANCUSTOMS ADMINISTRATION 4. ROYAL MALAYSIAN CUSTOMS VISION To Be A World Class Customs Administration By The Year 2015 MISION STATEMENT To Spur Economic Growth, Preserve National Security AndSocietys Well Being Through Revenue Collection, Trade AndIndustrial Facilitations And To Ensure Effective And EfficientLegislative Compliance FUNCTION Collect Indirect Taxes more efficiently and effectively To encourage Industrial Growth and development Detect & prevent smuggling activities, prevent loss of revenue Administer Customs related laws and regulations Coordinate International Affairs and Clients affairs 5. LEGAL BASIS The Major Laws Administered And Enforced By The Malaysian CustomsAuthority Are As Follows:- Customs Act 1967 Customs Regulations 1977 Excise Act 1976 Excise Regulation 1976 Sales Tax Act 1972 Sales Tax Regulations 1972 Service Tax Act 1975 Service Tax Regulations 1975 Free Zone Act 1990 Free Zone Regulations 1991 Vehicle Levy Act 1983 Dangerous Drugs Act 1952 Anti-Money Laundering and Anti-Terrorism Financing Act 2001 Anti-Trafficking in Persons and Anti-Smuggling of Migrants Act 2007 Chemical Weapons Convention Act 2005 Strategic Trade Act 2010 6. ORGANIZATION STRUCTURE ONI.P.R ENFORCEMENT 7. POLICY NATIONAL INTELLECTUALPROPERTY POLICY (N.I.P.P.) Policy Statement To harness I.P. as a new engine of growth. Focuses on maximizing the contribution of I.P. Valuable competitive economic asset in a knowledge-basedeconomy. To build Malaysia as an I.P. hub. Rationale A principal guide in enacting laws and regulations. Encourage activities on I.P. amongst the relatedgovernment agencies, research institutions, tertiaryinstitutions, N.G.Os. and the private sector. To stimulate and develop the I.P. industry as an integratedcomponent of the countrys economic policy. 8. CONTINUE Objectives Highest standard of I.P. protection system. Promotion of I.P. centered activities. Promotion of commercial exploitation of I.P.. Development of I.P. management capabilities. Development of infrastructure for I.P. transaction. Protection of national I.P. interest. Human resource development and public awareness. Promotion of foreign investment and technologytransfer. 9. Continue Aims Enhancement of economic, social and culturalprosperity. Strengthening the nations competitiveness. Development of Malaysia as a leading I.P. hub. Establishment of an I.P. culture. 10. STRATEGY Some Of The Strategies Are:- Strengthening the I.P. administration. Updating laws and regulations. Capacity building. Strengthening government agencies. Setting up I.P. court. Fast and easy acquisition of protection and rights. Proactive MyIPO Resource Centre. Create an encouraging I.P. environment. Enlarge I.P. pool. Acquire foreign I.P. in selected priority areas. Foster tripartite smart partnership between the government,private sector and research institutions. Capitalize existing I.P. pool. 11. CONTINUE Promote distribution of research and development results. Identify I.P. creators in the country. Support I.P. industries in their commercial exploitation. Stimulate entrepreneurial I.P. related activities. Create a business environment for the local and foreign enterprises. Create different level of I.P. specialists. Monitor the development and progress of I.P. in the international arena. Setting up a national institute on I.P. specialized training. Conduct regular I.P. public awareness campaign. Ensuring investors gain in their I.P. ventures. 12. PROTECTION Border Enforcement I.P.R. Specialist Team Sharing Expertise with I.P. Owners Building In-house I.P. Experts Usage of Information Technologies 13. ENFORCEMENT ACTION Seizure of IPR Infringing Products 1) 191 sets of counterfeit Kenwood brand walkie-talkie 2)CounterfeitMotorola brand walkie-talkie Counterfeit Cigarettes 1) 10,210,000 stick of Texas 5 & Luffman white cigarettes (Contraband) 14. FALSIFYING CONTRY ORIGIN Seizures of 3,328 units of Food Processor with YELMObrand Made in China products but claimed as Made in Malaysia Seizures of 7 container of Garments Made in China garments but claimed as Made in Malaysia Seizures of 2,100 cartons of GLINTER SOFT DRINK Made in China but claimed as Made in Malaysia 15. VIAGRA21 June 2009 4 containers 40 ft and 2 containers 20 ft were detained inPort Klang Consignment declared as Health Supplement, based on ourRisk Assesment 100% physical examination was conducted and found whitetablets suspected to be precusor for manufacturing syabu.Also discovered counterfeit viagra and cialis tablets concealedin the containers 16. Continues The white tablets suspected as precusors was investigated under The Dangerous Drugs Act 1952 and the counterfeit viagra case was handed over to Domestic Trade and Consumer Affairs Ministry (MDTCA) is now officially known as the Ministry of Domestic Trade, Cooperative and Consumerism (MDTCC), effective 11 June 2009 for further investigation and prosecution. 17. BORDER ENFORCEMENT The National Legislations on I.P.R. only grant theMalaysian Customs Authority ex-officio powers. TheLegislations are : Copyright Act 1987 Trade Marks Act 1976 Patents Act 1983 Industrial Design Act 1996 Layout designs and Integrated Circuit Act 2000 Geographical Indications Act 2000 18. SPECIALISED IPR ENFORCEMENTTEAM We do not have dedicated personnel at the regional specializing on I.P.R.. We have personnel to undertake the task on a sharing basis. The plan to expand the current resources is in the pipeline and we expect someday it will be a reality that a fully specialized and dedicated personnel on I.P.R. 19. EXPERT TRAINING We have a very closed working partnershipwith the I.P. holders and in many occasionsthe I.P. holders have invited the CustomsOfficers for specialized training on theirproducts. Training on I.P.R. is also conducted by ourCustoms Academy. We have training modules devised with the purpose of building I.P.R. experts in the organization. 20. USE OF CENTRAL DATABASE The Customs Authority is working closely with MyIPO on developing a system of sharing I.P.R. database and hopefully, this will materialized in the future. With this database combining with our existing Central Intelligence Network, we are confident that we will be able to curb the activity of smuggling counterfeit and pirated goods into and going outside the country. 21. PROBLEMS Fine Tuning Present Risk Assessment withI.P.R. Enforcement. Overstretched Resources. Capacity Building Training of Experts. Legislation Only on Importation and Not onExportation and In-Transit. 22. NATIONAL LEGISTLATIONS ON IPR Copyright Act 1987 Trade Marks Act 1976 Trade Descriptions Act 1972 Patent Act 1983 Industrial Design Act 1996 Optical Disc Act 2000 23. TRIPS AGREEMENT 1994(Trade Related Aspects of Intellectual Property Rights) Art. 41 (General Obligations) Members shall ensure that enforcement procedures as specified are available under their law. 24. TRIPS AGREEMENT 1994Sec. 4 Special Requirements Related To Border Measures Art. 51 Right holder (counterfeit trademark / pirated copyright goods) lodge report to competent authorities for suspension by customs of the release of such goods (import & export into / outside Malaysia). Competent Authorities in Malaysia Ministry Of Domestic Trade And Consumer Affairs (MDTCA) 25. TRIPS AGREEMENT 1994Sec. 4 Special Requirements Related To Border Measures Art. 52 right holder to provide adequate evidence of infringement of the IPR to the competent authorities Supply detailed description of the goods The competent authorities approval. 26. TRIPS AGREEMENT 1994Sec. 4 Special Requirements Related to Border Measures Art. 53 IP owner (IPO) to provide security to protect the defendant, competent authorities and to prevent abuse Importer to give security on application of release to protect the right holder and such security shall be released if the IPO fails to pursue the right action within reasonable time. 27. TRIPS AGREEMENT 1994Sec. 4 Special Requirements Related To Border Measures Art. 54 Notice of suspension Art. 55 Duration of suspension Art. 56 indemnification of the importer and theowner of the goods Art. 57 Right of inspection and information Art.58 Ex-officio Action 28. TRIPS AGREEMENT 1994Sec. 4 Special Requirements Related To Border Measures Art. 59 Remedies Competent authorities to dispose the infringing goods in accordance with Art. 46 Not to allow re exportation of the infringing goods. Art.60 De Minimis import Art. 51-59 does not applicable to small quantities of goods 29. TRIPS AGREEMENT 1994Sec. 4 Special Requirements Related To Border Measures Art. 61 Criminal Procedures Members to provide criminal procedures and penalties to cases of trademark counterfeiting / copyright piracy on a commercial scale. Remedies : Imprisonment / fine Seizure Forfeiture destruction 30. ROLE OF ROYAL MALAYSIANCUSTOMS ON IPR COPY RIGHT ACT 1987 Sec. 39 Sec. 41 TRADE DISCRIPTION ACT 1972 Sec. 17 TRADE MARKS ACT 1976 Sec. 70C 70P Reg. 83A 31. COPYRIGHT ACT 1987 Sec. 39 Restriction on importation of infringing copies IPO applies to Controller (MDTCA) for the work to betreated as infringing copies Security Fee / supporting document Controller Approval / duration as infringing copies Importation to be prohibited 32. Sec. 39 Power to search and seizure of prohibited infringing copies Assistant Controller, police, officer of customs After seizure Give notice to IPO / owner Prohibited infringing copies liable to forfeiture 33. Sec. 41 Offences Sec. 41(f) Imports into Malaysia otherwise than for his private anddomestic use Shall be liable to a fine not exceeding RM 10,000 for eachinfringing copy / jail not exceeding 5 years or both. Forsubsequent offence to a fine not exceeding RM 20,000 / jail notexceeding 10 years or both Sec. 41(j) Imports for distribution . Shall be liable to a fine not exceeding RM 250,000 / jail notexceeding 3 years / both. For subsequent offence to a fine notexceeding RM 500,000 / jail not exceeding 5 years or both 34. Part VII - Enforcement Powers Assistant Controller and Police 35. TRADE MARKS ACT 1976Part XIVABorder Measures Seizure of counterfeit trade mark and secure storage ofseized goods by authorized officer Authorized officer notify Registrar / importer /applicant of the seizure Applicant file action for infringement Inspection of seized goods by applicant / importersubject to undertaking Forfeiture of seized goods by consent of the importer 36. Compulsory released of seized goods to importer: Applicant not instituted action for infringement Action for infringement has been instituted but after 30 days there is no Court order for preventing the released of the goods. Aggrieved party may apply compensation from court ifapplicant failed to instituted action for infringement. 37. Sec. 70 o Ex Officio action Authorized officer detain the goods based on prima facie evidence Authorized officer notify the Registrar / importer / applicant of the detention 38. TRADE DESCRIPTIONS ACT 1972 Sec. 17 Prohibition of importation of goods bearing false indication of origin. The Minister may make an order prohibiting the importof the goods into Malaysia. 39. Until today RMC does not received: any application for prohibition of importation ofinfringing goods under Sec. 39 of the Copyright Act. Any objection of importation under Sec. 70D of theTrade Marks Act - Order for prohibition under Sec. 17 of the TradeDescriptions Act 40. (Ex Officio Action by RMC) Any complaint on importation of infringing goods /counterfeit trade marks: IPO refer to RMC headquarters Prima facie evidence of IP right holders Supply sufficient detailed description of goods 41. RMC search and seized Notify IP right holders and MDTCA Inspection by IP right holders and MDTCA If proved to be infringing goods, refer the case toMDTCA for investigation and further action. If no proof of infringement and no violation ofcustoms procedures - released the goods to the owner/ importer as soon as possible.