BUSINESS BRIEF: MALAYSIA
of technology and sophisticated circumvention measures by infringers, thus making the enforcement of copyright even more challenging.
Acts of infringement are actionable under both criminal and civil actions. Te Copyright Act 1987 grants the police and Ministry of Domestic Trade, Cooperatives and Consumerism (MDTCC) wide enforcement powers. Te act provides both enforcement bodies power to enter into any premises when there is a reasonable cause for suspecting that such premises house any infringing copies or contrivances for making infringing copies, and seize these infringing copies or contrivances with a warrant.
How should people ensure they are protected against copyright infringement?
Te Copyright (Voluntary Notification)
Regulations 2012, which came into force on June 1, 2012, enables a right holder voluntarily to give notification to the Registrar of Copyright of its interest in the copyrighted works, with the payment of the prescribed fees.
Documenting each creation of work which is eligible for copyright and affirming a statutory declaration declaring the ownership and subsistence of copyright in the work is advisable. Te statutory declaration is admissible in any proceedings in Court and is prima facie evidence of the facts.
Have there been any changes to the copyright law(s) in the last 12 months?
Te Copyright (Amendment) Act 2012 came into force on March 1, 2012. Some of the key features of the amendments are prohibition of the recording of films with a camcorder in a screening room, the provision for a notice and takedown system in respect of copyright infringements on the Internet by the Internet service provider and the extension of right of the police to have access to computerised or digitalised data in carrying out investigations.
www.worldipreview.com
Counterfeiting
How big a problem is counterfeiting in your jurisdiction? Malaysia’s responsiveness against counterfeiting and piracy was rewarded when it was announced in April 2012 that it had been removed from the US Trade Representative’s 2012 Special 301 Review. Nevertheless, counterfeiting activities are still a major concern in Malaysia.
What are the best strategies for dealing with the problem?
Improving the public enforcement machinery with the setting up of task forces and increased interaction between the enforcement officers under the MDTCC, MyIPO, the attorney general’s chambers, the Malaysian Customs officials and the IP owners in the conducting of raids and enforcement of border measures are effective strategies in reducing the infiltration and entry of counterfeit and pirated goods into the country.
Te Trade Descriptions Act 2011 came into force on November 1, 2011 and is a powerful tool in enforcing the rights of a trademark owner. A Trade Description Order (TDO) is a declaratory order granted by a High Court under the act in pronouncing whether an offending mark is a false trade description. Te TDO is used in order to enlist the enforcement division to conduct raids. Under the new act, the validity period of a TDO has been reduced from five years to one year.
General
Are there any legislative changes to the IP regime that would make life easier for businesses? Malaysia is still perceived as one of the major transit ports for counterfeit goods. Te Trade Marks Act 1976 accords customs officers and trademark owners the power to take action at the borders of Malaysia. Due to the highly onerous requirements imposed in the act, these border measures are rarely invoked by IP owners.
It is hoped that the proposed amendments to the trademark legislation will address these shortcomings. Tere is a proposal for the inclusion of provisions to allow for the monetisation and securitisation of IP rights including patent and trademark rights. Such a move would facilitate the acceptance of IP rights as security for loans by financial institutions.
Karen Abraham jointly heads Shearn Delamore & Co’s IP and IT department. She can be contacted at:
karen@shearndelamore.com
Jyeshta Mahendran is a partner in the IP and IT department of Shearn Delamore & Co. She can be contacted at:
jyeshta@shearndelamore.com
Karen Abraham (above leſt) has more than 20 years of IP experience covering IP litigation, mediation, enforcement and brand consultation and management
relating to
the full gamut of IP-related matters. She has craſted brand management programmes for leading multinational companies locally and throughout the world and has designed anti- counterfeiting and anti-piracy programmes and strategies for global IP brands.
Jyeshta Mahendran (above right) graduated with a BSc Honours in law and chemistry from the University of Keele, UK and was called to the Bar of England and Wales (Lincoln’s Inn) the following year. Mahendran is a registered trademark and industrial design agent. She has been actively involved in the field of IP for more than 10 years.
World Intellectual Property Review Annual 2013 125
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