BUSINESS BRIEF: MALAYSIA
“THE BORDER MEASURE PROVISIONS ARE STILL UNDER-UTILISED, ALTHOUGH THESE ARE POWERFUL TOOLS TO RESTRICT AND PROHIBIT THE IMPORTATION OF COUNTERFEIT GOODS INTO THE COUNTRY.”
tool for enforcing trademark rights. A Trade Description Order (TDO) is a declaratory order granted by the High Courts that says whether an offending mark is a false trade description. Where a TDO has been issued, the enforcement division will act on the complaint and carry out the relevant seizures. Where the identity of the main infringer is
known and there is knowledge that the party has sufficient assets to pay damages and costs, a civil suit may also be contemplated.
How can public-private partnerships to tackle counterfeiting be improved? Closer interaction
Parties should document all works in a tangible form and affirm a statutory declaration of copyright ownership.
between public and
private groups can significantly help to curtail counterfeiting activities. Te Basket of Brands programme is one example of a joint effort between brand owners and the public enforcement unit, where the enforcement division conducts raids for the brands registered under this programme without the need for investigations and the lodging of formal complaints. Joint training sessions
with the Royal
Malaysian Customs (RMC) have also seen encouraging results, where the emphasis is to create a training platform for RMC officials to enhance brand knowledge and recognition.
Copyright What are the key challenges to copyright owners in your jurisdiction? Copyright is fraught with challenges, mainly associated with the advancement of technology and the lack of
regulations to curb online
copyright infringement. Te sophisticated circumvention measures by copyright infringers has also posed difficulties.
How should people ensure they are protected against copyright infringement? Tere is no registration system for copyright.
www.worldipreview.com
What is the best way to deal with infringement? It is customary to send a letter of demand or a cease-and-desist letter before initiating a civil action. Acts of copyright infringement are actionable under both a criminal and civil action. Under the Copyright Act 1987, police and enforcement officials at the MDTCC can exercise their powers to enter any premises if they reasonably believe or suspect that such premises have any infringing materials, and seize these infringing materials with a warrant. An injunction to halt the production of copyright-infringing works could also effective.
be
General Are there any other IP developments we should know about? Te Industrial Designs (Amendment) Act 2013 (IDAA 2013), which came into force on July 1, 2013, introduced several amendments. First, the standard of novelty changed to worldwide from local. Another significant change brought by the IDAA 2013 is the extension of the registration period from 15 to 25 years. Additionally, the government is spearheading
efforts to enable businesses to expand using IP rights as collateral means to obtain financing. A valuation model will be created to enable IP rights to be valued and commercialised in the market. Te trademark, copyright and patent acts are
also in the midst of being amended in order to include provisions for the securitisation and monetisation of IP.
Jyeshta Mahendran is a trademark and patent attorney at Shearn Delamore. She focuses on trademarks and industrial designs, including prosecution, copyright, licensing, and anti-competition law. She is a committee member of the East Asia and Pacific anti-counterfeiting committee at
INTA. She can be contacted at:
jyeshta@shearndelamore.com
Karen Abraham jointly heads the intellectual property and information technology department of Shearn Delamore. She has experience in IP litigation, mediation, enforcement, and brand consultation and management. Abraham is on INTA’s panel of neutrals, and is an accredited mediator of
the
Malaysian Mediation Centre. She can be contacted at:
karen@shearndelamore.com
World Intellectual Property Review Annual 2015 103
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