Enforcing Your Intellectual Property Rights: by Lee Swee Seng

Enforcing your Intellectual Property
Rights
By
Lee Swee Seng
LLB, LLM, MBA
ADVOCATE & SOLICITOR
CERTIFIED MEDIATOR
PATENT AGENT
NOTARY PUBLIC
Copyright
www.leesweeseng.com
sweeseng@tm.net.my
1
Intellectual Property
 Intellectual Property (IP) has become a
significant area of focus in law.
 Now companies have begun to understand
the importance of extracting the maximum
value from their IP in terms of managing
license and other contractual arrangements.
2
 Malaysia is also taking greater steps in protecting IP by
the proposed creation of IP Courts and the 9th Malaysia
Plan which will include measures to promote
franchising.
 To protect IP rights, Malaysia has local legislation like
the IP Corporation of Malaysia Act 2002, Trademarks
Act 1976, Patents Act 1983, Copyright Act 1987,
Industrial Design Act 1996, Layout Designs and
Integrated Circuit Act 2000, Geographical Indications
Act 2000 and Optical Discs Act 2000.
3
Intellectual Property Rights
 Main IP Rights:
 Patents
 Copyright
 Trademark
 Industrial Designs
 Trade Secret & Confidential Information
4
Patents
 Patent Act 1983
 Patent Regulations 1986
 Provides 20 years legal protection to patent
holders which includes exploitation of the
patents, the assignment or transfer of rights
and license contract.
5
Patents
 The Act was revised in accordance with the
Paris Convention and TRIPS Agreement
 The Patent Act provide for the patent
enforcement by the Enforcement Division of
the Ministry of Domestic Trade and
Consumer Affairs.
 The Division will conduct the necessary
investigations and prosecutions.
 Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is a treaty administered by the World Trade Organization (WTO) which sets down
minimum standards for many forms of intellectual property (IP) regulation
6
Patents
 In accordance with TRIPS, the Patent Act
provides a protection period of 20 years
from date of filing an application
 Similarly a utility innovation certificate
provides for an initial period of 10 years
from the date of filing an application
7
Patent Infringement
 Once a patent has been granted, exploiting
without the consent of the proprietor is an
infringement.
 In the case of a product patent and process
patent, any making, disposal, import, the
use without consent would be an
infringement.
8
Patent Remedies
 Injunction
 Damages or account of profit
 Order of delivery up or destruction
 Declaration that the patent is valid and has
been infringed
9
Patent - Enforcement
 Entitlement to damages from date of
publication.
 Plaintiff must show not only the act
infringed the patent but the claims in the
form in which they were contained in the
application immediately before publication
10
Copyright
 Copyright Act 1987
 Copyright (Licensing) Regulations 2000
 protects : literary works, musical works, artistic
works, films, sound recordings, broadcasts and
derivative works
 protection lasts for authors lifetime and 50 years
after his death
 for sound recordings, protections subsist for 50 years
11
Copyright
 Act also provides for the performer’s rights in a
live performance which subsists for 50 years.
 Copyright is infringed when an unauthorized
person reproduces, makes for sale or hire,
distributes, possess, exhibits in public, etc.
 The Act provides enforcement by the Enforcement
Division apart from the police.
12
Copyright owners to take precaution
 Copyright owners are advised to make sure:
 authors’ name appears on all copies of literary,
dramatic, musical works, etc
 publisher’s name appears on all copies
 copyright owner’s name and date of first
publication and the country of first publication
appears on sound recordings and computer
programmes
13
Copyright owners to take pre-caution
 Anti-counterfeiting devices to aid solicitors
executing Anton Pillar Orders, police
officers executing search and seizure
warrants and Enforcement Division Officers
who are looking for counterfeit copies, to
detect the genuine copy.
14
Remedies for Infringement of
Copyright
 2 ways:
 Public enforcement
 enforcement by the police, customs officers and
Enforcement officers from the Ministry of
Domestic Trade and Consumer Affairs.
 Private enforcement
 civil action taken by private individuals to
enforce their copyright through Court.
15
Copyright
 Interlocutory Remedies;
 Court can issue interlocutory orders to
prevent substantial injustice being done in
the meantime.
16
Copyright
 Courts can issue:
 Interlocutory injunction
 Anton Pillar Order
 Norwich Pharmacal Order
17
Copyright - Injunction
 Interlocutory injunction is sought to
preserve the status quo pending hearing in
Court.
 It may be a ‘prohibitive order’ which
prevents the Defendant from performing
certain acts in the interim ie. Destroying the
infringing copies.
18
Copyright -
Various orders of injunctions
 A ‘mandatory order’ is to ask the Defendant to
carry out some act ie. Asking Defendant to deliver
up the infringing works to the Plaintiff.
 In deciding to grant an interlocutory injunction,
the Court will follow the principle laid down in
American Cyanamid v Ethicon Ltd by the
House of Lords which was applied in Keet
Gerald Francis v Mohd Noor [1995] 1 CLJ 293.
19
Copyright - Injunction
 The principle laid down in American Cyanamid
ie. A serious issue to be tried, balance of
convenience and is the damages adequate for the
Plaintiff.
 The Court will consider the balance of
convenience test and if the balance of
convenience is equal the Court will either
maintain status quo ie. injunction should stay or
look into the merits.
20
BASKIN ROBBINS INTERNATIONAL CO. &
ANOR. V. AVONDAY SDN. BHD.
[1992] 2 CLJ 201 (Rep) [1992] 2 CLJ 1198
 This is an application by the Plaintiff for an

interlocutory injunction to restrain the
Defendant from selling Defendant’s ice
cream using the mark USA 31.
 To apply for an interlocutory injunction, the
Plaintiff has to satisfy certain requirements
under American Cyanamid case.
21
[1992] 2 CLJ 201 (Rep) [1992] 2 CLJ 1198
 Hashim Yeop Sani J mentioned the case Prof

Dr. A Kahar Bador & Ors v N Krishnan &
Ors [1982] CLJ 630 (REP), stating that an
interlocutory injunction is merely provisional
and does not conclude a right. If a person can
show that he has a fair question to raise as to
the existence of the right which he alleges he
may be entitled to it.
22
[1992] 2 CLJ 201 (Rep) [1992] 2 CLJ 1198
 The Court went on to apply the principles in

American Cyanamid.
 The Court is satisfied that the claim is not
frivolous or vexatious and there are serious
issues to be tried.
 As to whether damages would be an adequate
remedy, the Court opined that if the Plaintiff
succeeds at the trial without this injunction, it
would not be possible to assess the amount of
23
[1992] 2 CLJ 201 (Rep) [1992] 2 CLJ 1198
 damages they would have suffered as it

would not be possible t o account the
number of customers that they had thereby
been deprived of.
 However the injunction is not to put an end
to the Defendant’s ice cream business. They
can still market their product before they
decided to adopt
24
[1992] 2 CLJ 201 (Rep) [1992] 2 CLJ 1198
the impugned mark USA 31.

 Thus the Court opines that the balance of
convenience lies in allowing the injunction as
it would not do a greater harm to the
Defendant.
 Another factor is that the Plaintiff applied
promptly hence the issue of statues quo being
preserved only existed before the Defendant
began
25
SAP(M) Sdn Bhd v I World
HRM Net Sdn Bhd & Anor
[2006] 2 MLJ 678
 The Second Plaintiff is the owner of the
copyright in a business application software
programme.
 The First Plaintiff is the second Plaintiffs
exclusive distributor of the software in
Malaysia.
26
SAP(M) Sdn Bhd v I World HRM
Net Sdn Bhd & Anor
[2006] 2 MLJ 678
their business in that manner.
 The Court allowed the Plaintiff’s
application for an interlocutory injunction

against the Defendant.
 The alleged breach that the First Defendant
and the Second Defendant had infringed the

copyright in the said software by
27
[2006] 2 MLJ 678
communicating the software to a third party
without the Plaintiff’s consent.
 The Plaintiffs are applying for an interim
injunction to restrain the Defendants from
using the Plaintiffs software and also to stop
them from infringing the Plaintiff’s
copyright in
28
[2006] 2 MLJ 678
the said software.
 The Court allowed the Plaintiff’s
application for interlocutory injunction as it
would surely damage the Plaintiff’s
goodwill and reputation as any disruption of
service would make the customers lose
confidence in the Plaintiff’s software.
29
[2006] 2 MLJ 678
 The damage suffered would be irreparable
and monetary compensation would not be
an adequate remedy.
 The balance of convenience favours the
Plaintiff who will not be able to control the
licensing of the software if the interim
injunction is not granted.
30
SAP(M) Sdn Bhd v I World HRM
Net Sdn Bhd & Anor
[2006] 2 MLJ 678
 Although there was delay in the application
for the interim injunction. The Defendants
were not prejudiced as the delay was due to
‘ongoing negotiations’. (Larut
Consolidation Bhd v Khoo Ee Bee [1997]
5 MLJ 77- delay for 2 years was excused)
31
“Delay defeats Equity”
 Evercrisp Snack Products (M) Sdn Bhd
& Anor v Sweeties Food Industries Sdn
Bhd [1979] 1 LNS 19
 The Plaintiff applied for an interlocutory
injunction that the Defendants be restrained
until the trial of the action of passing off.
32
Evercrisp Snack Products (M) Sdn Bhd & Anor v
Sweeties Food Industries Sdn Bhd [1979] 1 LNS
19
 But the Court HELD that there was

unreasonable delay in applying for the relief
and the delay was not satisfactorily
explained thus dismissing the motion to
apply for an interim injunction.
33
Copyright - Anton Pillar Order
 The Anton Pillar Order was named after the
case, Anton Pillar KG v Manufacturing
Process [1976] 1 Ch 55 whereby it permits
the Plaintiff to enter the Defendant’s
premises to inspect the relevant documents
and to remove them (search & seizure).
34
 In the case above, the Court opined that
there must be a balance between the
Plaintiffs claim that the evidence may be
destroyed and the Defendants claim that
there should be no invasion of privacy.
35
 To apply for Anton Pillar Order, the
Plaintiff must show he has a strong prima
facie case, the damage caused is very
serious, there is clear evidence the
Defendants have in their possession the
incriminating document and real possibility
that they may destroy the materials.
36
Copyright-
Norwich Pharmacal Order
 The Norwich Pharmacal Order which
originated from Norwich Pharmacal Co.
and Others v. Commissioners of Customs
and Excise[1973] 2 All ER 943 aids the
Plaintiff to compel a third party to reveal
information so the Plaintiff may ascertain
the actual wrongdoers.
37
Copyright-
Norwich Pharmacal Order
 The House of Lords HELD that where a
person is innocently involved in the
wrongdoing act of a third party, he is under
a duty to assist the Plaintiff by releasing the
identity of the wrongdoers but the he may
not be liable to the Plaintiff.
38
ESPL (M) Sdn Bhd v Harbert
International EST Sdn Bhd
[2003] 3 CLJ 864
 The Plaintiff had obtained by way of ex-
parte application a Norwich Pharmacal
Order and an Anton Pillar Order against the
Defendant.
 In the light of the above facts, the
Defendant applied to set aside the said
Orders on the following grounds:
39
[2003] 3 CLJ 864
 a) The Norwich Pharmacal Order should
have been made inter parte instead of ex
parte.
 b) The Plaintiff who after having failed to
subpoena the Defendant to produce
documents, decided to apply for Norwich
Pharmacal Order, was clearly committing
an abuse of the process of the court.
40
[2003] 3 CLJ 864
 c) In respect of the application to set aside
the Anton Pillar Order, the Plaintiff could
not show any risk that there is a risk of the
documents being destroyed.
 Therefore, the Court arrived at the decision
that the Defendant’s application to set aside
be granted.
41
Copyright - Final Remedies
 After liability for copyright has been
established, the Court may grant final
remedies:
 Permanent injunction
 Order for delivery of infringing copies
 Inquiry to damages or an account of profit
42
Copyright - Damages
 The basic measure for damages is the
depreciation caused by the infringement,
exploitation of the copyright owner’s work,
‘going market rate’, applicable royalty rate,
etc.
43
Copyright - Damages
 Since copyright infringement is a tort, rules
of causation and remoteness will apply ie.
Whether loss was in fact caused by
infringement and whether loss was
foreseeable.
44
Copyright - Damages
 If the copyright work is circulated in the
market, then the Plaintiff may calculate
damages via loss of profits.
 The Plaintiff has the option to choose
whether he wants an account of profits or
having damages assessed.
45
Copyright - Damages
 The Plaintiff may ask the Defendant to
account for his profits made via sale of
infringing copies and to have them
confiscated.
46
Copyright - Offences
 In addition to civil suit, s41 Copyright Act
1987 made certain infringing acts an
offence.
 The provision covers sales, distribution,
possession, exhibition, imports of the
infringing copy shall be guilty of an offence
and shall on conviction be liable to a fine of
not less than two thousand
47
ringgit and not more than twenty thousand
ringgit for each infringing copy, or to
imprisonment for a term not exceeding five
years or to both.
48
 Any person who causes a literary or musical
work to be performed in public shall be
guilty of an offence under this subsection
unless he is able to prove that he had acted
in good faith and had no reasonable grounds
for supposing that copyright would or might
thereby be infringed [s41(3)]
49
 s44 allows an Inspector to enter into
premises with a warrant to search and
inspect infringed goods and to seize and
remove them under s45 but a list must made
of the goods seized as required under s46.
 Remedies under criminal proceedings are
fines and jail sentences and not to recover
monetary compensation.
50
Prosecution of Copyright
Infringements
 Operations conducted by enforcement
officers together with representatives from
the copyright industry.
 Surprise inspections and raids with the aid
from the Police and RELA (Peoples
Voluntary Corps) to ‘protect’ the
enforcement officers while they search and
seize infringed items or products.
51
Infringements
 Various bodies involved;
 BSA, RIM(Recording Industry of Malaysia),
MPA(Motion Pictures Association of
America), IFPI (International Federation
Phonographic Industry), PPM (Public
Performance Malaysia) & MACP (Music
Authors Copyright Protection).
 Sources from xvi [2002] 4 MLJ Prosecution of copyright infringements :s42
52
Infringements
 Total of 45,241between 1999-2002
inspections and raids were conducted
nationwide by various enforcement officers,
police, customs, Ministry of Home Affairs,
FINAS (National Film Developing
Corporation) and local authorities.
53
Infringements
 s42 states that an affidavit or statutory
declaration (SD) may be made by owners
and agents and both are admissible in
criminal and civil proceedings.
54
Trademark
 Trade Marks Act 1976
 Trade Marks Regulations 1997
 The Act provides protection for registered
trademarks and service marks.
 It is a sign that distinguishes the goods and
services of one trader from those of another.
55
Trademarks
 According to MyIPO (Intellectual Property Corporation
of Malaysia), trademarks exhibits the following function:
 origin function
 choice function
 quality function
 marketing function
 economic function
 The Intellectual Property Division (IPD) was established on the 27th October 1990 under the jurisdiction of The Ministry of Domestic Trade and
Consumer Affairs Malaysia. The division is responsible for the development and management of intellectual property system in Malaysia. Prior to its
establishment, it was known as the 'Pejabat Pendaftaran Cap Dagangan dan Jaminhak' under the jurisdiction of The Ministry of Trade and Industry.
56
Trademark
 As for trademark, the period of protection is 10
years, renewable for every period of 10 years
thereafter [s41 TM 1976]
 However protection is difficult and tedious as
owner must convince the Court that the
infringing act misleads the public and secondly
the infringing goods and services may be
mistaken from this own goods and services.
57
Infringement of Trademark
 Section 38 of the Trade Marks Act 1976
 A registered trademark is infringed by a
person who is not a registered proprietor
when he uses a mark which is identical with
it or so nearly resembling it as it likely to
deceive or cause confusion in the course of
the trade.
58
Electro Cad Australia Pty Ltd & Ors
v Mejati RCS Sdn Bhd & Ors [1998]
3 MLJ 422
 The plaintiffs launched this suit to protect
their Stopcard Auto Theft Device
(Stopcard).
 The use by the defendants of the trademark
“Stopcar” which is very similar to that of
the Plaintiffs’ “Stopcard” is an
appropriation of Stopcard’s goodwill.
59
v Mejati RCS Sdn Bhd & Ors
[1998] 3 MLJ 422
 The High Court granted the following
orders against all the defendants:
 a) a declaration that Stopcard is the owner
of the goodwill in the trade name
“Stopcard” in Malaysia
60
 b) an injunction to restrain defendants from
manufacturing, selling or dealing with their
product “Stopcar” which possesses features
identical or similar of the Plaintiff’s product
“Stopcard”.
61
Electro Cad Australia Pty Ltd &
Ors v Mejati RCS Sdn Bhd &
Ors [1998] 3 MLJ 422
 c) delivery up or destruction upon oath all
documents in the possession of the
Defendants or under the control bearing the
word “Stopcar”
 d) damages to be assessed by the Deputy
Registrar
62
Alternative enforcement of
Trademark
 Trade Descriptions Act 1972 (TDA) is
enforced by the Ministry of Domestic
Trade and Consumer Affairs.
 TDA regulates the descriptions in relation
to goods and services.
63
Trade Description Act 1972
 TDA prohibits the making of false trade
descriptions ie. In the course of trade; apply
a false trade description to any goods or
supply or offer to supply any goods to
which a false trade description is applied.
64
Parkson Corp Sdn Bhd v
Fazaruddin Ibrahim
[2002] 4 CLJ 18
 The Respondent obtained a Trade
Description Order under s16 Trade
Description Act 1972(TDA) and prayed for
assessment of damages.
 The Appellant appealed against the
assessment of damages.
65
Parkson Corp Sdn Bhd v
Fazaruddin Ibrahim
[2002] 4 CLJ 18
 The Court of Appeal HELD that Parliament
intended to criminally punish the infringer
and not to make an order under s16 to
award damages.
 The Court opined that there can be no
assessment of damages unless there is an
order awarding damages, and in this case
there isn’t any thus allowing the appeal.
66
 The owner may apply to Court for an Order
declaring the infringing trade mark as a
false trade description under TDA known as
a Trade Description Order (TDO).
 A Trade Description Order is not an
injunction order but a declaratory order
which deems the infringing trade mark as a
false trade description.
67
 The owner has to establish a case of trade
mark infringement or passing off before the
Court grant the TDO.
 Application for TDO proceeds on an ex-parte
basis.
 In recent cases, some Courts have directed
the applicant to advertise the fact that he is
applying for a TDO.
68
Trade Description Order
 Time and cost is saved as it is usually a
fraction of that of a civil suit.
 Actual enforcement and prosecution of the
offence is conducted by a government
agency at no cost to the rights owner.
 TDO is an order in rem (against the world
at large) and has a lifespan of 5 years.
69
Original Label Enforcement
Trade Description (Original Label)
Order 2002
 With effect of January 2003, Ministry of
Domestic Trade and Consumer Affairs has
been gazetted to provide all copyright
owners and persons authorized by the
owners shall put original label on original
optical disc before entering the market.
 This is to protect copyright owners and
fight piracy activity.
70
Original Label Enforcement
Trade Description (Original Label)
Order 2002
 Under this order, enforcement officers may
arrest without a warrant any person
suspected of having committed an offence
whether at permanent or open premise.
71
Enforcement of the Trade
Description Order
 The Enforcement Division has the authority
to take action on its own accord and also to
take action based on complaints lodged by
person who suspects trademark
infringement or passing of action.
 When complaint is lodged, Enforcement
Division will study merits of the case.
72
Enforcement of the Trade
Description Order
 If there is doubt as to whether the goods
bearing the allegedly false trade description
may violate the TDA, the Enforcement
Division will require the rights owner to
obtain a TDO prior to taking action.
73
Powers of Enforcement Division
provided under the Trade
Description Act 1972
 Enter premise [s28]
 Seize and detain goods [s28]
 Order offender to produce relevant books
and documents [s28A]
 May compound the offence or prosecute the
offender [s28B]
74
Trade Description Order
 Prosecution is conducted by the
Enforcement Division and at its own cost,
thus rights owner is not party to the
prosecution and not entitled to any
damages.
75
Acushnet Company v Metro Gold
Manufacturing [2006] 7 CLJ 557
 US golf equipment manufacturer Acushnet,
which owns Titleist trade mark in Malaysia,
obtained summary judgment against a local
company
 Enforcement division of the Ministry of
Domestic Trade and Consumer Affairs
raided the Defendant’s premises and seized
several items bearing the Titleist trade mark.
76
 The Plaintiff sued the Defendant for trade mark
infringement and requested for a permanent
injunction, order for delivery, records of all
parties who supplied the Defendant with the
infringing goods and damages.
 The Defendant claimed that they had purchased
the goods from a company known as Zonson
Sports (M).
77
 The Court HELD that there was infringement of
the Plaintiff’s trade mark as it was identical to
the Plaintiff’s.
 There was no evidence that Zonson was an agent
of the Plaintiff and nonetheless the Defendant
had failed to conduct any due diligence with
regards to the representations made by Zonson
and cannot shift the burden onto the Plaintiff.
78
 The Court further HELD that by disposing
of the goods, Zonson was itself infringing
the Plaintiff’s trade mark.
 It is not open to the Defendant to claim
innocence, since there is no such defence in
trademark law.
79
Maju Perak Tepung Beras Sdn Bhd v
Tiga Gajah Cho Heng Sdn Bhd
[2001] 3 CLJ 241
 Dispute about the use of a trademark.
 Both sides claim right to use it, but
Respondent is the registered user and later
obtained a trade description order (TDO).
 The Appellant applied to set aside TDO and
even tried to rectify through the Register of
Trademarks which both failed.
80
Tiga Gajah Cho Heng Sdn Bhd [2001] 3
CLJ 241
 The Appellant argued that ex-parte TDO is
flawed because it failed to identify the
sufficient infringing trademark as required
under s16 Trade Descriptions Act 1972.
81
 As followed in Re Chuan Kuan Sang
[1992] 4 CLJ 2104 and Cho Heng Rice
Vermicelli Factory Co Ltd [2000] 8 CLJ
85, the applicant under s16 of the Act is
obliged to identify clearly and specifically
the contravening trade mark.
82
CLJ 241
 The Court opined that a TDO can only be
given against specific infringing trade
marks if particulars of the trademark
offender be known and such offender would
have to made party in proceeding.
83
CLJ 241
 The Court HELD that there is no other
description of the mark either by reference
to colour or other distinguishing feature.
 Merely annexing a mark to the order
without proper description does not satisfy
the requirement of s16 of the Act.
 The Court allowed the appeal hence setting
aside the TDO.
84
Passing Off - Enforcement
 Plaintiff may issue a letter before action to
demand Defendant to cease all tortious act
immediately.
 The letter will provide adequate details of
the Plaintiff’s intellectual property, identify
tortious act and to demand him to cease all
acts.
85
 It may include a demand providing
particulars of the infringing articles like the
quantity in stock or delivery up for
destruction.
 The letter also may include compensation
for wrongful acts and even demand a public
apology.
86
 Damages will generally include a loss in
trade or a damage to the Plaintiff’s
goodwill.
 Plaintiff must provide evidence of a loss of
sales or a dip in transactions and have the
Court to draw inferences based on the result
of the Defendant’s act.
87
Passing Off - Remedies
 An order of an inquiry is to permit the
Court to assess the amount of damage
suffered by the Plaintiff due to the
Defendant’s wrongful act.
 A Plaintiff may also apply for an account of
profits of the Defendant.
88
 It is an equitable remedy granted by the
Courts and it involves a calculation into the
Defendant’s profits made from his wrongful
acts.
89
 However an account of profits involves
detailed investigation of the Defendant’s
books and cost of such investigation and as
such not commonly resorted.
 A related cause of action to passing off is
defamation ie. Injurious or malicious
falsehood.
90
Industrial Designs
 Industrial Designs Act 1996
 Industrial Designs Regulations 1999
 It covers features of shape, configuration,
pattern or ornament applied to an article by
any industrial process.
91
Industrial Designs
 Pattern or ornament – eg. textile pattern
applied to the fabric by painting or weaving
 Shape or configuration – eg. ready-made
garment by making the article in that shape
or configuration.
92
Remedies on Industrial Design
 Injunction
 Either damages or an account of profit
 An order for delivery up or disposal
 Registered industrial design are protected
for an initial period of 5 years which may
be extended for another two 5 year terms,
totaling to a period of 15 years.
93
Trade Secret & Confidential
Information
 If employees are found to have divulged
confidential information while in
employment or after having left the
employment, the employers have the right
to require the employee or former employee
to stop divulging the said information and
to return any documents related to the said
information.
94
Trade Secret & Confidential
Information - Remedies
 Remedies available to the employers:
 Interlocutory Injunctions
 Mandatory or prohibitory injunction (final)
 Passing off
 Damages in conspiracy
95
Yeohata Industries Sdn Bhd &
Anor v Coil Master Sdn Bhd &
Ors [2001] 6 CLJ 418
 The Plaintiffs alleged the Defendants
unlawfully used the confidential
information relating to the production,
operation and marketing of Yeohata to
profit themselves and therefore applied for
interlocutory injunction to restrain the
Defendants from using the confidential
information.
96
Ors [2001] 6 CLJ 418
 The Court HELD that the Plaintiffs were in a
better position to pay damages in the event the
Defendant succeeded at the trial and the balance
of convenience favours the granting of injunction.
 The risks that other companies could unlawfully
use the confidential information to manufacture
and market a similar machine like Yeohatas and
the possibility
97
Ors [2001] 6 CLJ 418
 that the Defendants and their foreign partner
had conspired to injure the Plaintiffs
business constituted special factors that
required an injunction relief.
 A mandatory injunction was granted as it
would be just and equitable that the
Plaintiffs interest be protected to avoid
irreparable damages.
98
Ors [1998] 3 MLJ 422
 The Plaintiffs claimed for specific
performance as against the first Defendant of
the confidentiality agreement, action in
passing off and damages on the basis of
conspiracy by Defendants to obtain
information from Plaintiffs and to utilize it to
manufacture a product identical to the
Plaintiffs product and damages in conversion.
99
Ors [1998] 3 MLJ 422
 The Court HELD allowing the Plaintiffs
claims as the Defendant had divulged
confidential information and trade secrets for
their benefit.
 The Plaintiffs were also granted an
injunction over the Second Defendant for
breaching his fiduciary duties to not obtain a
business advantage over the Second Plaintiff.
100
Ors [1998] 3 MLJ 422
 The law of passing off is related to the
protection of the goodwill associated with a
business. The Second Plaintiff has done
extensive advertising campaign hence
generating a goodwill in their product.
 Thus the adoption by the Defendants of the
trademark in relation to a product
101
v Mejati RCS Sdn Bhd & Ors [1998]
3 MLJ 422
identical to the Plaintiffs was done with
intention of appropriating the Second
Plaintiffs goodwill and to pass off the
Defendants products as that of the Second
Plaintiffs.
102
Can intellectual property
misappropriation constitute a criminal
act?
 Criminal sanctions are often warranted to
ensure sufficient punishment and deterrence
and to curb wrongful activity.
 Violations of intellectual property rights
often involved no loss of tangible assets as
they do not even require any direct contact
with the rights holder.
103
Software Piracy -
Business Software Alliance
 The term software piracy covers different
activities:
 illegal copying of programmes.
 counterfeiting and distributing software.
 even sharing a programme with a friend.
104
Business Software Alliance
 Endorsed by the Ministry of Domestic
Trade and Consumer Affairs.
 Provides the BSA Software Audit
Programme 2006 which encourages
organizations to conduct a software audit on
all computers and servers ensuring the
software is adequate, correct and legal.
105
Companies worldwide suffers
billions in losses
 EU/US step up efforts to fight piracy &
counterfeiting.
 According to FBI, Interpol and World
Organization and the International Chamber of
Commerce estimates, roughly 7-8% of world
trade was in counterfeit goods which was
equivalent to as much as USD512 billion in
global lost sales.
 Bernama.com 2 Feb 2007 by Tengku Noor Hamsiah
106
Recent Raids conducted
 “Computer software worth RM115,300
seized” [The Star, Friday May 19 2006]
 Enforcers raided an architect firm in Kota
Kinabalu and seized 26 illegal copies of

software and 7 computers worth
RM21,000/-.
107
Recent Raids conducted in KL city
 “Bukit Bintang no longer hub for pirated
software” [The Star, Saturday February 17
2007]
 Raids (Ops Helang) were conducted from 5
December 2006 to 6 February 2007 on 82

premises at 4 shopping complexes in 2
months.
108
Recent Raids conducted in KL city
 The complexes involved are Sg. Wang,
Low Yatt Plaza, Imbi Plaza and Berjaya
Times Square.
 28 arrests were made and RM2.3 million
worth of CDs and 9 vehicles were seized.
109
United States Trade Representative (USTR)
2005 “Special 301” Annual Review of IPR
Protection - Malaysia
 Malaysia is not doing enough to curtail the
high piracy rates for optical media and is a
substantial exporter of counterfeit and
pirated products.
 No protection for pharmaceutical and
agricultural chemical test data from unfair
commercial use.
110
USTR 2005 “Special 301” Annual
Review of IPR Protection - Malaysia
 USA copyright industry estimated its losses
in Malaysia at approximately USD188
million in 2004.
 Drug counterfeiting is a growing problem in
Malaysia.
111
IP Court to solve IP matters
 The Government will establish an Intellectual
Property (IP) Court by this year(2007).
 The move is to eradicate piracy and
counterfeiting activities.
 Intellectual Property Corporation of Malaysia
(IPC) is organizing seminars for prosecuting
officers to enhance their knowledge in IP laws.
 Bernama.com 23 May 2006
112
IP Court to solve IP matters
 Main IP laws dealing with criminal
provisions are Copyright Act that dealt with
piracy and the Trade Descriptions Act 1972
that dealt with counterfeiting.
 The Domestic Trade and Consumer Affairs
may amend the copyright laws to prosecute
landlords or premise owners who allowed
their tenants to sell counterfeit products .
 Bernama.com 23 May 2006
113
Factories warned if producing
unauthorized optical disc
 The Government warned licensed optic disc
factories nationwide that they would be
closed down if caught producing pirated
video or music discs.
 Between 2001 and 2006 18 Sept, 902 raids
were conducted on these factories and
recorded 39 cases of various offences.
 Article - Sept 25 2006 Sun2Surf(theSun)
114
 40 optical disc production machines worth
RM72.6 million were seized.
 In the first 6 months of 2006, Ministry
officers conducted 179,195 raids nationwide.
 39,346 cases were recorded involving the
arrest of 1,948 vendors for selling pirated
discs worth RM475 million.
115
 According to statistics gathered by 6 local
authorities in Klang Valley, 166 raids were
made on vcd/cd sales centre in their
respective areas, where 214,091 discs worth
RM1.1 million were seized.
116
Piracy v Counterfeiting
 Piracy describes the act of reproducing
movies, music, books and other copyrighted
works without permission from the
copyright owner or illegitimate copying.
 Counterfeit describes fake goods or goods
packed so as to resemble the original.
117
Types of Piracy
 1) Piracy in the home.
 2) Copying of sound recordings from an
audiotape onto a compact disc.
 3) The use of copying machines to make
copies of literary works.
 4) Home copying of sound recordings
 5) Home copying of broadcasts.
 Flint, A Userguide to Copyright
118
Types of Piracy
 6) Home copying of computer programmes
and video games.
 7) Commercial piracy and counterfeiting-
industrial designs and artistic works ie.
Tennis rackets, golf club, shirts printed with
patterns which copy registered designs, etc.
119
Types of Piracy
 8) Piracy of broadcasts and cable programmes
ie. Receiving a programme in a broadcasts or
cable programme with intent to avoid payment.
 9) Commercial piracy and counterfeiting-
cinematograph films ie. Copying an original
feature film from its 35mm version onto video
tapes.
120
Types of Piracy
 End user or corporate copying
 Counterfeiting
 Hard disk loading-OS installed without
supplying original CDs, end user license
agreement, certificate of authenticity, etc
121
Types of Piracy
 Mischannelling-distribution of software
under special discount licenses and then
redistributed to others who do not qualify
for these licenses
 Internet Piracy
122
The position in Malaysia
 Criminal Sanctions for IP are available
under:
 Copyright Act 1987
 Trade Description Act 1972
 Optical Disc Act 2000
123
S 41 of the Copyright Act 1987
 Any person who during subsistence of copyright
in a work or performers’ right:-
 a) makes for sale or hire any infringing copy;
 b) sells, lets for hire or by way of trade, exposes or
offers for sale or hire any infringing copy;
 c) distributes infringing copies;
 d) possesses, otherwise that for his private and
domestic use, any infringing copy;
124
 e) by way of trade, exhibits in public any infringing
copy;
 f) imports in Malaysia, otherwise that for his private
and domestic use, any infringing copy;
 g) makes or has in possession any contrivance used
or intended to be used for the purposes of making
infringing copy;
 h) circumvents or causes the circumvention of any
effective technological measures;
 i) removes or alters any electronic rights
management information without authority;
125
 j) distributes, imports for distribution without
authority, works or copies of works in respect of
which electronics rights management information
has been removed or altered without authority,
 shall, Unless he is able to prove that he acted in
good faith and had no reasonable grounds for
supposing that copyright or performers’ right
would or might thereby be infringed, be guilty
of an offence.
126
Trade Description Act 1972(TDA)
 The TDA prohibits the making of false trade
descriptions.
 The TDA makes it an offence for any person to, in
the course of trade:
 (1) apply a false trade description to any goods or
 (2) supply or offer to supply any good to which a
false trade description is applied
 Hence, in some way it includes counterfeit
products.
127
Optical Disc Act 2000 (OPA)
 The OPA establishes a licensing and regulatory
framework for all processes or activities that are
involved in manufacture of optical disc.
 This Act aims to reduce piracy of IP by requiring
all makers of optical disc to obtain licenses from
both the Ministry of International Trade and
industry and the Ministry of Domestic Trade and
Consumer Affairs
128
Optical Disc Act 2000 (OPA)
 Under this Act, any person who manufactures
optical disc without a valid license or
manufactures optical disc in a place other than the
licensed premises commits an offence.
 The Act also requires the licensee to cause the
optical disc to be marked with the manufacture
code.
 Failure to do so will amount to an offence.
129
Offences under Optical Discs Act
2000 - Statistics
 s4 ODA 2000(producing OD without
license):
 2004 - 6 cases and RM13.5 million in
seizure value
 2005 - 7 cases and RM27.5 million in
seizure value
 Annual Report of Ministry of Domestic Trade and Consumer Affairs
130
Offences under Optical Discs Act
2000 - Statistics
 s19 ODA 2000(producing OD without
displaying the Plant Code):
 2004 - 4 cases and RM1.9 million in seizure
value
 2005 - 5 cases and RM300,000/- in seizure value
 Total of 22 cases and RM43.2 million in seizure
[2004-2005]
 Annual Report of Ministry of Domestic Trade and Consumer Affaris
131
Conclusion
 Malaysia provides a well established framework in
the protection of IP rights.
 Owners of IP rights should also remain proactive
in enforcing their IP rights against infringement,
 In view of the growing importance in Malaysia,
investment in the protection of IP rights has
become increasingly vital to protect the
competitive advantage accorded by IP rights.
132
END
Assisted by:
Kenneshwaran Kandiah LLB(Hons)
Sum Wai Hoe LLB(Hons) CLP
133

Enforcing Your Intellectual Property Rights: by Lee Swee Seng

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Enforcing your Intellectual Property

 This is an application by the Plaintiff for an

 Hashim Yeop Sani J mentioned the case Prof

 The Court went on to apply the principles in

 damages they would have suffered as it

the impugned mark USA 31.

application for an interlocutory injunction

and the Second Defendant had infringed the

 But the Court HELD that there was

 Sources from xvi [2002] 4 MLJ Prosecution of copyright infringements :s42

 Sources from xvi [2002] 4 MLJ Prosecution of copyright infringements :s42

Kinabalu and seized 26 illegal copies of

December 2006 to 6 February 2007 on 82

worth of CDs and 9 vehicles were seized.

 Total of 22 cases and RM43.2 million in seizure

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