ip management in malaysia
TRANSCRIPT
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)