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INTELLECTUAL PROPERTY LAW

Introduction to Intellectual Property


Copyright
Trade Marks
Patent
Industrial Design
Geographical indications
Layout Design of Integrated Circuit
Remedies

INTRODUCTION
IP rights are the rights given to the persons
over the creations of their minds. They usually
give the creator an exclusive right (statutory
monopoly) over the use of his/her creation for
a certain period of time from unauthorized
exploitation.

IP law is that area of law which concerns legal


rights associated with creative effort or
commercial reputation and goodwill.

History of IP
World
Intellectual
Property
Organisation (WIPO) is a specialised
agency of the United Nation (UN)
which is responsible for the promotion
of protection of IP through out the
world.

History of IP continued
Several of these conventions are administered by
WIPO.
1. Paris Conventions (1883)
2. Berne Convention (1886)
3. Rome Convention (1961)
4. Washington Treaty (1989)
5. TRIPs Agreement (Trade Related Aspects of
Intellectual Property Rights)
6.The Internet treaties (WCT and WPPT)

IP in Malaysia
Malaysia is the member of :

WIPO (World Intellectual Property


Organization) - 1 Jan 1989
Paris Convention - 1 Jan 1989
Berne Convention - 1 Oct 1990
WTO/TRIPs - 1994

IP in Malaysia continued
IP consists of several areas such as:
Copyright
Trade Secret
Trade marks
Patent
Layout design of the integrated circuit
Geographical Indication
Industrial Design

COPYRIGHT
It is an exclusive right given to the authors
to protect their 'original works' whether
they are published or unpublished for a
certain period of time.
The relevant statute is Copyright Act 1987
Copyright law exists to prevent others
from taking unfair advantage of a person's
creative efforts

COPYRIGHT continued
Works that are eligible for copyright
protection are as provided under Section
7(1) of the Copyright Act 1987:
literary works;
musical works
artistic works;
films
sound recordings; and
broadcasts.

COPYRIGHT continued
According to Section 3, literary works
includes;
novels, stories, books, pamphlets, manuscripts,
poetical works, and other writings;
plays, dramas, stage directions, film scenarios,
broadcasting scripts, choreographic works and
pantomimes;
treaties, histories, biographies, essays and
articles;

COPYRIGHT continued
encyclopedias, dictionaries and other
works of reference;
letters, reports and memoranda;
lectures, addresses, sermon and other
works of the same nature ;
tables or compilations, whether or not
expressed in words, figures or symbols
and whether or not in a visible form; and
computer programs.

COPYRIGHT continued
Subsistence of copyright
Originality
Work
Expression
No provision for registration
Material form

COPYRIGHT continued
Originality
Under the copyright law, the word
'original' does not necessarily require the
work to be new or innovative.
It is concerned more on the manner in
which the work was created and is usually
taken to require that the work in question
originated from the author, its creator, and
that it was not copied from another work.

COPYRIGHT continued
Work
For copyright to subsist in a literary,
dramatic, musical or artistic work, it must
qualify as a 'work', and one way of
determining this is to consider the amount
of skill, labour or judgment which has gone
into its creation.

COPYRIGHT continued
Expression
Copyright protects expression but not ideas.
Section 7(2A) of Copyright Act 1987 states
that;
" Copyright protection shall not extend to any
idea, procedures, method of operation or
mathematical concepts."

COPYRIGHT continued
No provision for registration
There is no copyright registration system in
Malaysia. A work shall be automatically
protected under copyright if all the
requirements under the Copyright Act 1987
has been fulfilled.

COPYRIGHT continued
Material form
In order to be protected, it must be reduced to
material form.
Section 7(3) provides that a literary, musical
or artistic work shall not be eligible for
copyright unless (b) the work has been written down, recorded or
otherwise reduced to material form.

COPYRIGHT continued
Section 3 of the Act defines what is meant
by 'material form'.
Material form", in relation to a work or a
derivative work, includes any form (whether
visible or not) of storage from which the work
or derivative work, or a substantial part of the
work or derivative work can be reproduced

COPYRIGHT continued
Qualification;
Section 10 of the Act deals with the
qualification for protection in which any work
eligible for copyright shall be made by a
qualified person as mentioned in Section 3 of
the Act.
The protection also covers for any eligible
work made in Malaysia.

COPYRIGHT continued
Duration of protection
The duration of protection for any literary,
musical or artistic work lasts for the lifetime
of the author plus another 50 years after his
death.

COPYRIGHT continued

Computer program or software program is also


protected under the Copyright Act 1987.

Rights granted to copyright owners

A copyright owner is granted a bundle of rights


as listed in Section 13(1) such as right to
reproduce, communicate to the public,
perform, distribute, and rent.

Infringement
The right granted under copyright :Section
13(1)(a) to (f) which only the owner can do
or authorize.
When somebody other than the owner
attempts to do certain act within the
exclusive rights of the owner without the
permission or authorisation of the owner,
he is said to infringe the copyright of the
owner.

Infringement continued

Infringement can be further divided into:


Direct infringement
Indirect infringement
Other types of infringement

Direct Infringement
Section 36(1) : copyright is infringed by any
person who does or causes any other person
to do without the licence of the owner of the
copyright, an act the doing of which is
controlled by copyright under this Act.
Peko Wallsend Operations Ltd & Ors v.
Linatex Process Rubber Bhd and another
action
Microsoft Corp v PC House (Imbi) Sdn Bhd

Indirect Infringement:

Section 36(2)-

if any person who without the


consent or licence of the copyright
owner, imports an article into
Malaysia for the purpose of: selling, letting for hire, or by way of
trade, offering or exposing for sale or
hire the article;

Indirect Infringement continued

distributing the article


for the purpose of trade; or
for any other purposes to an extent
that it will affect prejudicially the
owner of the copyright; or
This kind of infringement is also
known as secondary infringement.

Other types of infringement


Section 36(3) (4) and (5) of the Act is
added by virtue of Copyright
Amendment Act 1997.
36(3) - circumvention of any effective
technological measures that are used
by the authors in respect of their
works without authorisation or valid
licence.

CREATIVE PURPOSE SDN. BHD. & ANOR. v.


INTEGRATED TRANS CORPORATION SDN.BHD
[1997]

The plaintiffs alleged that the defendants


infringed the copyright in the software
program by reproducing the same
without licence or consent and
distributed the infringing copies to the
public.
The court found that there has been clear
infringement by the defendants.

TRADEMARK
A Trade Mark is a word, name,
symbol or device which is used to
indicate who produced a product and
to distinguish that product from
others.
The main act is Trade Marks Act
1976

TRADEMARK continued
The sign may consist of one or more distinctive
words, letters, numbers, drawings or pictures,
emblems, colours or combinations of colour, or
the form or other special presentation of
containers or packages for the product
(provided they are not solely dictated by their
function).

The sign may consist also of combinations of any


of the said elements

TRADEMARK continued
To qualify for registration, marks must be
distinctive and must not necessarily be
descriptive (describe the goods) and not conflict
with trade marks of third parties (Section 10 of
the Act).
A mark cannot be registered as trade mark if:
the use of the mark is likely to deceive or cause
confusion to the public or contrary to the law; it
contains or comprises any scandalous or
offensive matter; or it contains a matter which in
the opinion of Registrar is or might be
prejudicial to the interest or security of the
nation.

TRADEMARK continued
Trademark law is designed to protect the consumer
goodwill that merchants develop through the use of the
trademarks by preventing other merchants from using
similar marks to confuse customers into thinking that
their goods come from the original mark owner

Trademark Infringement
Sections 38 :
A registered trade mark is infringed by a
person who,:
not being the registered proprietor of the trade
mark or
registered user of the trade mark using by way
of permitted use, uses a mark which is
identical with it or so nearly resembling it as
is likely to deceive or
cause confusion in the course of trade in
relation to goods or services in respect of
which the trade mark is registered

Related Cases:
Fabrique Ebel Societe Anonyme v Syarikat
Perniagaan Tukang Jam City Port & Ors trade
mark EBEL has been infringed

Yomeishu Seizo Co Ltd & Ors v Sinma Medical


Products (M) Sdn Bhd
Luk Lamellen Und Kupplungsbau GmbH v South
East Asia Clutch Industries Sdn Bhd
Tohtonku Sdn Bhd v Superace (M) Sdn Bhd

What is passing off?


Passing off is a practice of giving consumers
the impression that goods or services of one
trader come from another trader who has
established business reputation and goodwill.
It also occurs where one trader indicates that
his goods are the same quality as those of
another trader or where one trader creates the
impression of association with another trader.

Difference between Trademark Infringement & Passing Off

Once trademark is registered, protection


against
infringement
is
automatic.
Trademarks are considered as a form of
personal property and their unlawful use by
another is interference or infringement of the
registered proprietor's rights.
On the other hand, the plaintiff in a passing
off action must demonstrate the presence of
goodwill in order to have a right of action.

TRADEMARK continued

Trademark legislation protects rights in the


actual name and provides the proprietor
with a property right while :
the tort of passing off in common law
protects the goodwill of a business
associated with a trade name.
CASES:
Dun & Bradstreet (Singapore) Pte Ltd &
Anor v Dun & Bradstreet (Malaysia) Sdn
Bhd

PATENT
A patent is a right to an invention,
either a product or proceed, which is
new, involved an inventive step and
industrially applicable.
Patents Act 1983

DEFINITION OF PATENT
The Patents Act 1983 does not define the
word patent.

However, by virtue of Section 3, the Act


introduces the following concepts;
Patented invention
Product
Patented product
Patented process

Cont
A patent is a monopoly right granted by the
Government to an individual, who has
created an invention in a form of a product
or process, to exploit his invention and to
prevent others from, in return for, disclosing
information about the invention.

RATIONALE
The purpose, for which the patent is granted, is
to reward to patentee for sharing knowledge
regarding new inventions.
It will further certainly encourage the inventor
or patentee to make other useful inventions.
For the patentee, having a monopoly of a
product or a process for a limited period, it is to
allow her to recoup the investment that has been
made on research and development of the
invention before others come onto the market to
compete.

RIGHTS GRANTED TO PATENTEE


Section 3 defines the owner of the patent
(patentee) as the person for the time being
recorded in the Register as the grantee of a
patent.

The patentee has the legal rights to stop others


producing the patented goods or applying the
patented process by suing for infringement - for
up to twenty years from the date of filing of
application.

PATENTABLE INVENTIONS
An invention according to section 12 of the Act
means :
an idea of an inventor which permits in
practice the solution to a specific problem in the
field of technology.
Section 11 spells out that an invention is
patentable if it;
is new;
involves an inventive step; and
is industrially applicable.

PATENT INFRINGEMENT
Once a patent has been granted, the patent
owner (the patentee) has the right to stop
others from manufacturing, using, selling or
importing the subject of the patent twenty
years from the date of filing of application.
The patentee may protect his interest by suing
for infringement which shall be instituted
within 5 years from the act of infringement.

INDUSTRIAL DESIGN
An industrial design is the ornamental or
aesthetic aspect of a useful article.
Such particular aspect may depend on
the shape, pattern or colour of the article.

Industrial design is governed by


Industrial Design Act 1996

The design must appeal to and be judged by the eye

Amp Inc v Utilux Pty Ltd,


It lays down some observations on eye appeal.
Firstly, the eye-appealing features must be at least
visible in the finished article and more likely
noticeable, eye-catching or even special, peculiar,
distinctive, significant or striking.
Secondly, the eye which is appealed to and judged by
shall be that of the customer and not the court or a
designer familiar with articles of the type in question.
Thirdly, the design need not appeal in an artistic or
aesthetic sense, though it may do so.

REGISTRABLE DESIGN
Industrial design will not be protected unless it
is registered. In order for any industrial design
to be qualified for registration, it must satisfy
all these criteria: It must come within the definition of
industrial design under Section 3
It must be new
It shall not contrary to public order or
morality

INDUSTRIAL DESIGN INFRINGEMENT


Industrial designs are usually protected
against
unauthorized
copying
or
imitation.
Under Article 26(3) of the TRIPS
Agreement, the duration of protection
available shall amount to at least 10
years.

Infringement of ID
Part IV of the Act deals with infringement of
industrial design.
Section 32(1) lays down the rights of the owner
of industrial designs which states as follows;
the owner of a registered industrial design
shall have the exclusive right to make or
import for sale or hire, or for use for the
purposes of any trade or business, or to sell,
hire or to offer or expose for sale or hire, any
article to which the registered industrial
design has been applied

Redland Tiles Ltd & Ors v Kua Hong Brick Tile


Works

It was alleged that the defendants manufactured


tiles of the like shape and configuration as the
design registered by the plaintiffs in the United
Kingdom. The defendant then contended that the
tiles were of different designs and appearance.
It was held by the court that in actions for
infringement of a registered design the eye is the
sole test and looking at the two sets of tiles it was
clear that the sizes, profiles and configuration of
these tiles were so similar that they were likely to
confuse and therefore application must be
granted.

GEOGRAPHICAL INDICATIONS
A geographical indication" means an indication
which identifies any goods as originating in a
country or territory, or a region or locality in that
country or territory, where a given quality,
reputation or other characteristic of the goods is
essentially attributable to their geographical
origin.

The statute is Geographical Indication Act 2000

LAYOUT-DESIGN OF INTEGRATED CIRCUIT


Integrated Circuit means a product, whether in its
final form or in an intermediate form, in which
the elements, at least one of which is an active
element, and some or all of the interconnections
are integrally formed in and on, or in or on, a
piece of material and which is intended to
perform an electronic function.

The relevant Act is Layout-Designs of Integrated


Circuits Act 2000