MANAGING INTELLECTUAL PROPERTIES

BBBA 4933

Name: Monizha A/P Selvan

Matrix Id: BBA 1909-1442

Lecturer: Priya Sukirthanandan

Hand out date: 12th November 2021

Submission date: 30th December 2021

Table of Contents

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Introduction…………………………………………………………………………………………………………………….3 - 6

Paris Convention with Malaysia……………………………………………………………………………………… 7

Paris Convention impact on Malaysia………………………………………………………………………………8 - 9

Paris Convention Achievement with Malaysia………………………………………………………………….10

Paris Convention with Kuwait………………………………………………………………………………………….11

Paris Convention impact on Kuwait ………………………………………………………………………………….12

Paris Convention Achievement with Kuwait ……………………………………………………………………. 12

Conclusion ……………………………………………………………………………………………………………………… 13

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Introduction

The Paris Convention applies to industrial property in the widest sense, including patents,
trademarks, industrial designs, utility models such as a kind of "small-scale patent" provided for
by the laws of some countries, service marks, trade names like designations under which an
industrial or commercial activity is carried out, geographical indications which means indications
of source and appellations of origin and the repression of unfair competition. The substantive
provisions of the Convention fall into three main categories such as national treatment, right of
priority and common rules.

Under the provisions on national treatment, the Convention provides that, as regards the
protection of industrial property, each Contracting State must grant the same protection to
nationals of other Contracting States that it grants to its own nationals. Nationals of non-
Contracting States are also entitled to national treatment under the Convention if they are
domiciled or have a real and effective industrial or commercial establishment in a Contracting
State.

Besides, the Convention provides for the right of priority in the case of patents and utility models
where they exist, marks and industrial designs. This right means that, on the basis of a regular
first application filed in one of the Contracting States, the applicant may, within a certain period
of time 12 months for patents and utility models, 6 months for industrial designs and marks,
apply for protection in any of the other Contracting States. These subsequent applications will be
regarded as if they had been filed on the same day as the first application. In other words, they
will have priority hence the expression "right of priority" over applications filed by others during
the said period of time for the same invention, utility model, mark or industrial design.
Moreover, these subsequent applications, being based on the first application, will not be
affected by any event that takes place in the interval, such as the publication of an invention or
the sale of articles bearing a mark or incorporating an industrial design. One of the great practical
advantages of this provision is that applicants seeking protection in several countries are not
required to present all of their applications at the same time but have 6 or 12 months to decide in
which countries they wish to seek protection, and to organize with due care the steps necessary
for securing protection.

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Other than that, the Convention lays down a few common rules that all Contracting States must
follow and the most important are patents, marks, industrial design, trade name, indication of
source and unfair competition.

Firstly, patents granted in different Contracting States for the same invention are independent of
each other the granting of a patent in one Contracting State does not oblige other Contracting
States to grant a patent a patent cannot be refused, annulled or terminated in any Contracting
State on the ground that it has been refused or annulled or has terminated in any other
Contracting State. The inventor has the right to be named as such in the patent. The grant of a
patent may not be refused, and a patent may not be invalidated, on the ground that the sale of the
patented product, or of a product obtained by means of the patented process, is subject to
restrictions or limitations resulting from the domestic law. Each Contracting State that takes
legislative measures providing for the grant of compulsory licenses to prevent the abuses which
might result from the exclusive rights conferred by a patent may do so only under certain
conditions. A compulsory license which is a license not granted by the owner of the patent but by
a public authority of the state concerned, based on failure to work or insufficient working of the
patented invention, may only be granted pursuant to a request filed after three years from the
grant of the patent or four years from the filing date of the patent application, and it must be
refused if the patentee gives legitimate reasons to justify this inaction. Furthermore, forfeiture of
a patent may not be provided for, except in cases where the grant of a compulsory license would
not have been sufficient to prevent the abuse. In the latter case, proceedings for forfeiture of a
patent may be instituted, but only after the expiration of two years from the grant of the first
compulsory license.

Secondly, The Paris Convention does not regulate the conditions for the filing and registration of
marks which are determined in each Contracting State by domestic law. Consequently, no
application for the registration of a mark filed by a national of a Contracting State may be
refused, nor may a registration be invalidated, on the ground that filing, registration or
renewal has not been effected in the country of origin. The registration of a mark obtained in one
Contracting State is independent of its possible registration in any other country, including the
country of origin; consequently, the lapse or annulment of the registration of a mark in one
Contracting State will not affect the validity of the registration in other Contracting States.

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Where a mark has been duly registered in the country of origin, it must, on request, be accepted
for filing and protected in its original form in the other Contracting States. Nevertheless,
registration may be refused in well-defined cases, such as where the mark would infringe the
acquired rights of third parties; where it is devoid of distinctive character; where it is contrary to
morality or public order; or where it is of such a nature as to be liable to deceive the public. If, in
any Contracting State, the use of a registered mark is compulsory, the registration cannot be
canceled for non-use until after a reasonable period, and then only if the owner cannot justify this
inaction.

Each Contracting State must refuse registration and prohibit the use of marks that constitute a
reproduction, imitation or translation, liable to create confusion, of a mark used for identical and
similar goods and considered by the competent authority of that State to be well known in that
State and to already belong to a person entitled to the benefits of the Convention.

Each Contracting State must likewise refuse registration and prohibit the use of marks that
consist of or contain, without authorization, armorial bearings, State emblems and official signs
and hallmarks of Contracting States, provided they have been communicated through the
International Bureau of WIPO. The same provisions apply to armorial bearings, flags, other
emblems, abbreviations and names of certain intergovernmental organizations. Collective
marks must be granted protection.

Other than that, industrial designs must be protected in each Contracting State, and protection
may not be forfeited on the ground that articles incorporating the design are not manufactured in
that State.

Moreover, trade name is the protection must be granted to trade names in each Contracting State
without there being an obligation to file or register the names.

Also indications of source measures must be taken by each Contracting State against direct or
indirect use of a false indication of the source of goods or the identity of their producer,
manufacturer or trader.

Lastly, unfair competition. Each Contracting State must provide for effective protection against
unfair competition.

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The Paris Union, established by the Convention, has an Assembly and an Executive Committee.
Every State that is a member of the Union and has adhered to at least the administrative and final
provisions of the Stockholm Act (1967) is a member of the Assembly. The members of the
Executive Committee are elected from among the members of the Union, except for Switzerland,
which is a member ex officio. The establishment of the biennial program and budget of the
WIPO Secretariat as far as the Paris Union is concerned is the task of its Assembly.

The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Washington in
1911, at The Hague in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in 1967,
and was amended in 1979. The Convention is open to all States. Instruments of ratification or
accession must be deposited with the Director General of WIPO.

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Paris Convention with Malaysia

The Director General of the World Intellectual Property Organization (WIPO) presents his
compliments to the Minister for Foreign Affairs and has the honor to notify him of the deposit by
the Government of Malaysia, on June 23, 1988, of its instrument of accession to the Paris
Convention for the Protection of Industrial Property of March 20, 1883, as revised at Stockholm
on July 14, 1967.

Malaysia has not heretofore been a member of the International Union for the Protection of
Industrial Property (Paris Union), founded by the Paris Convention.

The Paris Convention, as revised at Stockholm on July 14, 1967, and amended on

October 2, 1979, in accordance with Article 21(3) of the said Convention, enter into force, with
respect to Malaysia, on the date indicated by the Government of Malaysia, that is, on
January 1, 1989. On that date, Malaysia has become a member of the Paris Union.

Malaysia belong to Class VII for the purpose of establishing its contribution towards the budget
of the Paris Union.

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Paris Convention impact on Malaysia

Intellectual property system in Malaysia is administered by the Intellectual Property Corporation

of Malaysia (MyIPO), an agency under the Ministry of Domestic Trade and Consumer Affairs.
Intellectual property protection in Malaysia comprises of patents, trade marks, industrial designs,
copyright, geographical indications and layout designs of integrated circuits. Malaysia is a
member of the World Intellectual Property Organisation (WIPO) and a signatory to the Paris
Convention and Berne Convention which govern these intellectual property rights. In addition,
Malaysia is also a signatory to the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) signed under the auspices of the World Trade Organisation (WTO). Malaysia
provides adequate protection to both local and foreign investors. Malaysia’s intellectual property
laws are in conformance with international standards and have been reviewed by the TRIPs
Council periodically

The Patents Act 1983 and the Patents Regulations 1986 govern patent protection in Malaysia. An
applicant may file a patent application directly if he is domicile or resident in Malaysia. A
foreign application can only be filed through a registered patent agent in Malaysia acting on
behalf of the applicant. Similar to legislations in other countries, an invention is patentable if it is
new, involves an inventive step and is industrially applicable. In accordance with TRIPS, the
Patents Act stipulates a protection period of 20 years from the date of filing of an application.
Under the Act, the utility innovation certificate provides for an initial duration of ten years
protection from the date of filing of the application and renewable for further two consecutive
terms of five years each subject to use. The owner of a patent has the right to exploit the patented
invention, to assign or transmit the patent, and to conclude a licensed contract. However,
exception to patent such as compulsory license and parallel import are also included.

Trade mark protection is governed by the Trade Marks Act 1976 and the Trade Marks
Regulations 1997. The Act provides protection for registered trademarks and service marks in
Malaysia. Once registered, no person or enterprise other than its proprietor or authorized users
may use them. Infringement action can be initiated against abusers. The period of protection is
ten years, renewable for a period of every ten years thereafter. The proprietor of the trade mark
or service mark has the right to deal or assign as well as to license its use. As with patents, while

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local applicant may file applications on their own, foreign applicants will have to do so through
registered trade mark agents.

Industrial design protection in Malaysia is governed by the Industrial Designs Act 1996 and
Industrial Designs Regulations 1999. The Act provides the rights of registered industrial designs
as that of a personal property capable of assignment and transmission by operation of the law. To
be eligible for registration, industrial designs must be new and do not include a method of
construction or design that is dictated solely by function. In addition, the design of the article
must not be dependent upon the appearance of another article of which it forms an integral part.
Local applicants can file registrations individually or through a registered industrial designs
agent. However, foreign applicants will need to seek the services of a registered industrial
designs agent. Registered industrial designs are protected for an initial period of five years which
may be extended for a further four consecutive terms, providing a total protection period of 25
years. Malaysia has amended the Industrial Designs Act 1996 which entered into force on 1 July
2013. The amendments include worldwide novelty, increase term of protection, introduce IP
Journal System and provision on monetization and securitization of industrial designs

Industrial design protection in Malaysia is governed by the Industrial Designs Act 1996 and
Industrial Designs Regulations 1999. The Act provides the rights of registered industrial designs
as that of a personal property capable of assignment and transmission by operation of the law. To
be eligible for registration, industrial designs must be new and do not include a method of
construction or design that is dictated solely by function. In addition, the design of the article
must not be dependent upon the appearance of another article of which it forms an integral part.
Local applicants can file registrations individually or through a registered industrial designs
agent. However, foreign applicants will need to seek the services of a registered industrial
designs agent. Registered industrial designs are protected for an initial period of five years which
may be extended for a further four consecutive terms, providing a total protection period of 25
years. Malaysia has amended the Industrial Designs Act 1996 which entered into force on 1 July
2013. The amendments include worldwide novelty, increase term of protection, introduce IP
Journal System and provision on monetization and securitization of industrial designs

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Paris Convention Achievement with Malaysia

Malaysia has been a Contracting Party to the Paris Convention for the Protection of Industrial
Property since January 1, 1989. It has also been a Contracting Party to the Patent Cooperation
Treaty (PCT) since August 16, 2006. Malaysia is also part of the regional IP information
platform ASEAN Patent scope. More legal information about intellectual property-related laws
and regulations of Malaysia can be found on WIPO Lex. Online Patent Register and Online
Gazette Malaysia has an Online Register (IP Online Search) and an Online Gazette (IP Online
Journal). The online patent register has an English interface and offers simple and advanced
search functionalities. Through the patent register can retrieve information on PCT national
phase entry and legal status. The patent register can also be searched by PCT application or
publication number, by applicant or inventor name and by priority data. On ASEAN Patent
scope, it is also possible to search on an English interface for Malaysian patents by PCT
application or publication number, by applicant or inventor name, and by priority data, and to
retrieve information on legal status, priority data, and PCT national phase entry. For more
information about ASEAN Patent scope, consult the detailed jurisdiction file. The online gazette,
containing a list of basic patent data, is published in English every four weeks. Patent
publications are available since 2012.

Other types of publications such as trademark, industrial designs are also available from 2012
onwards. Additional Information Particularities of patent protection in Malaysia Patents are
granted for 20 years from filing under the current law. However, applications filed or granted
before August 1, 2001 are valid for 15 years from the grant date, or 20 years from the filing date,
whichever results in a longer patent protection. Fee Payment is reported as "Renewal Due Date".
An example of a Legal Status is "Lapsed", e.g. for Application No PI 20000918.

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Paris Convention Kuwait

The Director General of the World Intellectual Property Organization (WIPO) presents his
compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the
Government of the State of Kuwait, on September 2, 2014, of its instrument of accession to
the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised at
Stockholm on July 14, 1967, and as amended on September 28, 1979 (Paris Convention).

The Paris Convention will enter into force, with respect to the State of Kuwait, on
December 2, 2014. On that date, the State of Kuwait will become a member of the International
Union for the Protection of Industrial Property ("Paris Union"), founded by the Paris
Convention.

On 11 May 2014, two new laws nos. 35 & 36 for the year 2014 were published in the official
gazette no. 1183 ratifying the joining of the State of Kuwait to the Paris Convention for the
Protection of Industrial Property, respectively.

The key points of the Paris Convention are National treatment which is tackled by Articles 2 &
3, and Priority right which is tackled by Article 4 to this treaty. National treatment means that
juristic and natural persons who are either nationals of or domiciled in a state that is a party to
the Convention shall, as regards the protection of industrial property, enjoy in all the other
countries of the Union, the advantages that their respective laws grant to nationals. Moreover,
nationals of any country of the Union shall, as regards the protection of industrial property, enjoy
in all the other countries of the Union the advantages that their respective laws now grant, or may
hereafter grant, to nationals; all without prejudice to the rights specially provided for by this
Convention. Consequently, they shall have the same protection as the latter, and the same legal
remedy against any infringement of their rights, provided that the conditions and formalities
imposed upon nationals are complied with.

However, no requirement as to domicile or establishment in the country where protection is

claimed may be imposed upon nationals of countries of the Union for the enjoyment of any
industrial property rights. The provisions of the laws of each of the countries of the Union
relating to judicial and administrative procedure and to jurisdiction, and to the designation of an

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address for service or the appointment of an agent, which may be required by the laws on
industrial property are expressly reserved.

Nationals of countries outside the Union who are domiciled or who have real and effective
industrial or commercial establishments in the territory of one of the countries of the Union shall
be treated in the same manner as nationals of the countries of the Union.

Priority right means that an applicant from one contracting State shall be able to use its first
filing date (in one of the contracting States) as the effective filing date in another contracting
State, provided that the applicant files a subsequent application within 6 months (for industrial
designs and trademarks) or 12 months (for patents and utility models) from the first filing.

As of September 2013, the Paris Convention had 175 contracting member countries, which
makes it one of the most widely adopted treaties worldwide, and making the State of Kuwait the
176th member.

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Conclusion

The Paris Convention system is a much awaited and welcomed move in the right direction for
the global expansion of Malaysian business, in particular manufacturing businesses. The Paris
Convention System will encourage more Malaysians to seek patent rights overseas as now
Malaysians have better opportunities to fully exploit their inventions or technology abroad. In
many areas of knowledge based business securing patents is a precondition to invest or trade in a
country.

Conversely, more foreign businesses would also be encouraged to seek patent rights in Malaysia.
This would pave the way for more foreign investments in the country and which would further
strengthen the country’s economy.

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References

Bravo, G., 2001. From Paris Convention to TRIPS: A Brief History. J.

Contemp. Legal Issues, 12, p.445.

Vancouver
Bodenhausen, G.H.C., 1968. Paris convention for the protection of industrial property. Koln I971. Cerca
con Google.

Mukhtar, S., Ashiqin, Z. and Jusoh, S.B., 2017. Trademark dispute settlement in Malaysia: A comparative
analysis with the TRIPS and the Paris convention. Journal of Law and Conflict Resolution, 9(2), pp.9-25.

Agarwal, P., 2017. Protection of Well-Known Trademarks in Malaysia: Compliant with Paris Convention,
TRIPS and TPP?. NLIU Journal of IP Law, 6.

Mohamed, A.H., 2011. LIMITATION OF MARITIME LIABILITY A STUDY OF 1976 CONVENTION AND
KUWAIT MARITIME LAW. Journal of Law/Magallat al-Huquq, 35(3).

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