Enforcing your Intellectual Property Rights

By Lee Swee Seng


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.


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 3 2000 and Optical Discs Act 2000.

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. 5 . the assignment or transfer of rights and license contract.

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. 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 . The Division will conduct the necessary investigations and prosecutions.

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 .Patents   In accordance with TRIPS.

Patent Infringement   Once a patent has been granted. import. any making. In the case of a product patent and process patent. disposal. exploiting without the consent of the proprietor is an infringement. 8 . the use without consent would be an infringement.

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 .

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 .Enforcement   Entitlement to damages from date of publication.Patent .

broadcasts and derivative works protection lasts for authors lifetime and 50 years after his death for sound recordings. films.Copyright      Copyright Act 1987 Copyright (Licensing) Regulations 2000 protects : literary works. protections 11 subsist for 50 years . artistic works. sound recordings. musical works.


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.


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 precaution 

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.


Private enforcement civil action taken by private individuals 15 to enforce their copyright through Court. .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.

16 . Court can issue interlocutory orders to prevent substantial injustice being done in the meantime.Remedies for Infringement of Copyright  Interlocutory Remedies.

Remedies for Infringement of Copyright    Courts can issue: Interlocutory injunction Anton Pillar Order Norwich Pharmacal Order 17 .

It may be a µprohibitive order¶ which prevents the Defendant from performing certain acts in the interim ie. 18 .Injunction   Interlocutory injunction is sought to preserve the status quo pending hearing in Court. Destroying the infringing copies.Copyright .

In deciding to grant an interlocutory injunction. 19 . Asking Defendant to deliver up the infringing works to the Plaintiff.Copyright Various orders of injunctions   A µmandatory order¶ is to ask the Defendant to carry out some act ie. 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.

A serious issue to be tried.Injunction   The principle laid down in American Cyanamid ie. 20 . injunction should stay or look into the merits. 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. balance of convenience and is the damages adequate for the Plaintiff.Copyright .

the Plaintiff has to satisfy certain requirements under American Cyanamid case. 21 . [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. & ANOR. AVONDAY SDN. BHD.BASKIN ROBBINS INTERNATIONAL CO. To apply for an interlocutory injunction. V.

BASKIN ROBBINS INTERNATIONAL CO. A Kahar Bador & Ors v N Krishnan & Ors [1982] CLJ 630 (REP). AVONDAY SDN. stating that an interlocutory injunction is merely provisional and does not conclude a right. [1992] 2 CLJ 201 (Rep) [1992] 2 CLJ 1198  Hashim Yeop Sani J mentioned the case Prof Dr. BHD. . V. 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 22 it. & ANOR.

[1992] 2 CLJ 201 (Rep) [1992] 2 CLJ 1198    The Court went on to apply the principles in American Cyanamid. the Court opined that if the Plaintiff succeeds at the trial without this injunction. V. it would not be possible to assess the amount of 23 . AVONDAY SDN. The Court is satisfied that the claim is not frivolous or vexatious and there are serious issues to be tried. BHD. & ANOR.BASKIN ROBBINS INTERNATIONAL CO. As to whether damages would be an adequate remedy.

[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. BHD. AVONDAY SDN. & ANOR. 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 . V.BASKIN ROBBINS INTERNATIONAL CO.

BASKIN ROBBINS INTERNATIONAL CO. [1992] 2 CLJ 201 (Rep) [1992] 2 CLJ 1198   the impugned mark USA 31. AVONDAY SDN. Another factor is that the Plaintiff applied promptly hence the issue of statues quo being preserved only existed before the Defendant began 25 . BHD. V. & ANOR. 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.

The First Plaintiff is the second Plaintiffs exclusive distributor of the software in Malaysia.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. 26 .

SAP(M) Sdn Bhd v I World HRM Net Sdn Bhd & Anor [2006] 2 MLJ 678 their business in that manner.  The alleged breach that the First Defendant and the Second Defendant had infringed the copyright in the said software by 27 .  The Court allowed the Plaintiff¶s application for an interlocutory injunction against the Defendant.

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  .SAP(M) Sdn Bhd v I World HRM Net Sdn Bhd & Anor [2006] 2 MLJ 678 communicating the software to a third party without the Plaintiff¶s consent.

29 .  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.SAP(M) Sdn Bhd v I World HRM Net Sdn Bhd & Anor [2006] 2 MLJ 678 the said software.

SAP(M) Sdn Bhd v I World HRM Net Sdn Bhd & Anor [2006] 2 MLJ 678   The damage suffered would be irreparable and monetary compensation would not be an adequate remedy. 30 . 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.

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. (Larut Consolidation Bhd v Khoo Ee Bee [1997] 5 MLJ 77delay for 2 years was excused) 31 . The Defendants were not prejudiced as the delay was due to µongoing negotiations¶.

32  .³Delay 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.

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 .

Anton Pillar Order  The Anton Pillar Order was named after the case. 34 .Copyright . 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).

35 .Anton Pillar Order  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.Copyright .

36 . there is clear evidence the Defendants have in their possession the incriminating document and real possibility that they may destroy the materials. the damage caused is very serious. the Plaintiff must show he has a strong prima facie case.Copyright .Anton Pillar Order  To apply for Anton Pillar Order.

CopyrightNorwich 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.

CopyrightNorwich 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.


ESPL (M) Sdn Bhd v Harbert International EST Sdn Bhd [2003] 3 CLJ 864  

The Plaintiff had obtained by way of exparte 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:


ESPL (M) Sdn Bhd v Harbert International EST Sdn Bhd [2003] 3 CLJ 864   a) The Norwich Pharmacal Order should have been made inter parte instead of ex parte. 40 . was clearly committing an abuse of the process of the court. b) The Plaintiff who after having failed to subpoena the Defendant to produce documents. decided to apply for Norwich Pharmacal Order.

the Court arrived at the decision that the Defendant¶s application to set aside be granted. 41 .ESPL (M) Sdn Bhd v Harbert International EST Sdn Bhd [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.

Copyright . the Court may grant final remedies: Permanent injunction Order for delivery of infringing copies Inquiry to damages or an account of profit 42    .Final Remedies After liability for copyright has been established.

etc. exploitation of the copyright owner¶s work. applicable royalty rate.Damages  The basic measure for damages is the depreciation caused by the infringement.Copyright . µgoing market rate¶. 43 .

Whether loss was in fact caused by infringement and whether loss was foreseeable. 44 .Copyright . rules of causation and remoteness will apply ie.Damages  Since copyright infringement is a tort.

Damages   If the copyright work is circulated in the market.Copyright . 45 . The Plaintiff has the option to choose whether he wants an account of profits or having damages assessed. then the Plaintiff may calculate damages via loss of profits.

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 .

The provision covers sales.Offences   In addition to civil suit.Copyright . exhibition. distribution. 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 . possession. s41 Copyright Act 1987 made certain infringing acts an offence.

Offences 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 .Copyright .

Copyright .Offences  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 .

Offences   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.Copyright . 50 . Remedies under criminal proceedings are fines and jail sentences and not to recover monetary compensation.

Surprise inspections and raids with the aid from the Police and RELA (Peoples Voluntary Corps) to µprotect¶ the enforcement officers while they search and seize infringed items or products. 51 .Prosecution of Copyright Infringements   Operations conducted by enforcement officers together with representatives from the copyright industry.

Prosecution of Copyright Infringements  Various bodies involved. BSA. MPA(Motion Pictures Association of America). IFPI (International Federation Phonographic Industry). Sources from xvi [2002] 4 MLJ Prosecution of copyright infringements :s42  52 . PPM (Public Performance Malaysia) & MACP (Music Authors Copyright Protection). RIM(Recording Industry of Malaysia).

Prosecution of Copyright Infringements  Total of 45. Ministry of Home Affairs. police. customs. Sources from xvi [2002] 4 MLJ Prosecution of copyright infringements :s42  53 .241between 1999-2002 inspections and raids were conducted nationwide by various enforcement officers. FINAS (National Film Developing Corporation) and local authorities.

Prosecution of Copyright 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.  Sources from xvi [2002] 4 MLJ Prosecution of copyright infringements :s42 54 .

It is a sign that distinguishes the goods and services of one trader from those of another.Trademark     Trade Marks Act 1976 Trade Marks Regulations 1997 The Act provides protection for registered trademarks and service marks. 55 .

The division is responsible for the development and management of intellectual property system in 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. it was known as the 'Pejabat Pendaftaran Cap Dagangan dan Jaminhak' under the jurisdiction of The Ministry of Trade and Industry. 56 . Prior to its establishment.Trademarks        According to MyIPO (Intellectual Property Corporation of Malaysia).

57 . 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. the period of protection is 10 years.Trademark   As for trademark.

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 .

59 .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 ³Stopcar´ which is very similar to that of the Plaintiffs¶ ³Stopcard´ is an appropriation of Stopcard¶s goodwill.

Electro Cad Australia Pty Ltd & Ors 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 ³Stopcard´ in Malaysia 


b) an injunction to restrain defendants from manufacturing, selling or dealing with their product ³Stopcar´ which possesses features identical or similar of the Plaintiff¶s product ³Stopcard´.


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 ³Stopcar´ d) damages to be assessed by the Deputy Registrar


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 .

In the course of trade. 64 .Trade Description Act 1972  TDA prohibits the making of false trade descriptions ie. apply a false trade description to any goods or supply or offer to supply any goods to which a false trade description is applied.

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. 65 . The Appellant appealed against the assessment of damages.

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. 66 . 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.

67 .Trade Description Act 1972   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.

Trade Description Act 1972    The owner has to establish a case of trade mark infringement or passing off before the Court grant the TDO. 68 . In recent cases. some Courts have directed the applicant to advertise the fact that he is applying for a TDO. Application for TDO proceeds on an exparte basis.

TDO is an order in rem (against the world at large) and has a lifespan of 5 years.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. 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. 70 . This is to protect copyright owners and fight piracy activity.

71 . enforcement officers may arrest without a warrant any person suspected of having committed an offence whether at permanent or open premise.Original Label Enforcement Trade Description (Original Label) Order 2002  Under this order.

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. 72 . When complaint is lodged. Enforcement Division will study merits of the case.

73 .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.

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 .

thus rights owner is not party to the prosecution and not entitled to any damages.Trade Description Order  Prosecution is conducted by the Enforcement Division and at its own cost. 75 .

76 . 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. which owns Titleist trade mark in Malaysia.Acushnet Company v Metro Gold Manufacturing [2006] 7 CLJ 557   US golf equipment manufacturer Acushnet.

Acushnet Company v Metro Gold Manufacturing [2006] 7 CLJ 557   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. 77 . The Defendant claimed that they had purchased the goods from a company known as Zonson Sports (M).

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 78 Plaintiff. .Acushnet Company v Metro Gold Manufacturing [2006] 7 CLJ 557   The Court HELD that there was infringement of the Plaintiff¶s trade mark as it was identical to the Plaintiff¶s.

It is not open to the Defendant to claim innocence.Acushnet Company v Metro Gold Manufacturing [2006] 7 CLJ 557   The Court further HELD that by disposing of the goods. since there is no such defence in trademark law. 79 . Zonson was itself infringing the Plaintiff¶s trade mark.

Maju Perak Tepung Beras Sdn Bhd v Tiga Gajah Cho Heng Sdn Bhd [2001] 3 CLJ 241    Dispute about the use of a trademark. The Appellant applied to set aside TDO and even tried to rectify through the Register of Trademarks which both failed. but Respondent is the registered user and later obtained a trade description order (TDO). Both sides claim right to use it. 80 .

81 .Maju Perak Tepung Beras Sdn Bhd v 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.

82 . the applicant under s16 of the Act is obliged to identify clearly and specifically the contravening trade mark. As followed in Re Chuan Kuan Sang [1992] 4 CLJ 2104 and Cho Heng Rice Vermicelli Factory Co Ltd [2000] 8 CLJ 85.

83 .Maju Perak Tepung Beras Sdn Bhd v Tiga Gajah Cho Heng Sdn Bhd [2001] 3 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.

Merely annexing a mark to the order without proper description does not satisfy the requirement of s16 of the Act. 84 .Maju Perak Tepung Beras Sdn Bhd v Tiga Gajah Cho Heng Sdn Bhd [2001] 3 CLJ 241    The Court HELD that there is no other description of the mark either by reference to colour or other distinguishing feature. The Court allowed the appeal hence setting aside the TDO.

The letter will provide adequate details of the Plaintiff¶s intellectual property. identify tortious act and to demand him to cease all acts. 85 .Passing Off .Enforcement   Plaintiff may issue a letter before action to demand Defendant to cease all tortious act immediately.

86 .Passing Off .Enforcement   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.

Passing Off . 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 .Enforcement   Damages will generally include a loss in trade or a damage to the Plaintiff¶s goodwill.

Passing Off . A Plaintiff may also apply for an account of profits of the Defendant.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. 88 .

Passing Off .Remedies  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 .

Passing Off . Injurious or malicious falsehood.Remedies   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. 90 .

Industrial Designs    Industrial Designs Act 1996 Industrial Designs Regulations 1999 It covers features of shape. configuration. 91 . pattern or ornament applied to an article by any industrial process.

Industrial Designs   Pattern or ornament ± eg. readymade garment by making the article in that shape or configuration. 92 . textile pattern applied to the fabric by painting or weaving Shape or configuration ± eg.

93 .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.

Trade Secret & Confidential Information  If employees are found to have divulged confidential information while in employment or after having left the employment. 94 . 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.

Trade Secret & Confidential Information .Remedies     Remedies available to the employers: Interlocutory Injunctions Mandatory or prohibitory injunction (final) Passing off Damages in conspiracy 95 .

operation and marketing of Yeohata to profit themselves and therefore applied for interlocutory injunction to restrain the Defendants from using the confidential information. 96 .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.

Yeohata Industries Sdn Bhd & Anor v Coil Master Sdn Bhd & 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 97 possibility .

A mandatory injunction was granted as it would be just and equitable that the Plaintiffs interest be protected to avoid irreparable damages.Yeohata Industries Sdn Bhd & Anor v Coil Master Sdn Bhd & 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. 98  .

Electro Cad Australia Pty Ltd & Ors v Mejati RCS Sdn Bhd & 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 .

100 .Electro Cad Australia Pty Ltd & Ors v Mejati RCS Sdn Bhd & 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.

Thus the adoption by the Defendants of the trademark in relation to a product 101 .Electro Cad Australia Pty Ltd & Ors v Mejati RCS Sdn Bhd & 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.

Electro Cad Australia Pty Ltd & Ors 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 .

counterfeiting and distributing software.    104 . even sharing a programme with a friend.Software Piracy Business Software Alliance The term software piracy covers different activities: illegal copying of programmes.

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. 105 . correct and legal.Business Software Alliance   Endorsed by the Ministry of Domestic Trade and Consumer Affairs.

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.com 2 Feb 2007 by Tengku Noor Hamsiah 106  . According to FBI.Companies worldwide suffers billions in losses   EU/US step up efforts to fight piracy & counterfeiting. Bernama.

107 .300 seized´ [The Star.Recent Raids conducted  ³Computer software worth RM115. 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/-.

108 . 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.Recent Raids conducted in KL city  ³Bukit Bintang no longer hub for pirated software´ [The Star.

Recent Raids conducted in KL city The complexes involved are Sg. Low Yatt Plaza. 109 . Wang.3 million worth of CDs and 9 vehicles were seized. Imbi Plaza and Berjaya Times Square. 28 arrests were made and RM2.

110 .United States Trade Representative (USTR) 2005 ³Special 301´ Annual Review of IPR Protection . No protection for pharmaceutical and agricultural chemical test data from unfair commercial use.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.

Drug counterfeiting is a growing problem in Malaysia.USTR 2005 ³Special 301´ Annual Review of IPR Protection . 111 .Malaysia   USA copyright industry estimated its losses in Malaysia at approximately USD188 million in 2004.

The move is to eradicate piracy and counterfeiting activities.com 23 May 2006 112  .IP Court to solve IP matters    The Government will establish an Intellectual Property (IP) Court by this year(2007). Bernama. Intellectual Property Corporation of Malaysia (IPC) is organizing seminars for prosecuting officers to enhance their knowledge in IP laws.

com 23 May 2006 113  . 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.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.

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. 902 raids were conducted on these factories and recorded 39 cases of various offences.Sept 25 2006 Sun2Surf(theSun) 114  . Between 2001 and 2006 18 Sept. Article .

39. In the first 6 months of 2006. Article .Factories warned if producing unauthorized optical disc    40 optical disc production machines worth RM72. Ministry officers conducted 179.6 million were seized.346 cases were recorded involving the arrest of 1.Sept 25 2006 Sun2Surf(theSun) 115  .195 raids nationwide.948 vendors for selling pirated discs worth RM475 million.

1 million were seized.Sept 25 2006 Sun2Surf(theSun)  116 . Article .091 discs worth RM1. where 214.Factories warned if producing unauthorized optical disc  According to statistics gathered by 6 local authorities in Klang Valley. 166 raids were made on vcd/cd sales centre in their respective areas.

Piracy v Counterfeiting   Piracy describes the act of reproducing movies. music. Counterfeit describes fake goods or goods packed so as to resemble the original. books and other copyrighted works without permission from the copyright owner or illegitimate copying. 117 .

4) Home copying of sound recordings 5) Home copying of broadcasts.Types of Piracy       1) Piracy in the home. A Userguide to Copyright 118 . Flint. 2) Copying of sound recordings from an audiotape onto a compact disc. 3) The use of copying machines to make copies of literary works.

Types of Piracy   6) Home copying of computer programmes and video games. Tennis rackets. golf club. 7) Commercial piracy and counterfeiting-industrial designs and artistic works ie. Flint. A Userguide to Copyright 119  . shirts printed with patterns which copy registered designs. etc.

Copying an original feature film from its 35mm version onto video tapes. Flint. Receiving a programme in a broadcasts or cable programme with intent to avoid payment. 9) Commercial piracy and counterfeiting-cinematograph films ie. A Userguide to Copyright 120  .Types of Piracy   8) Piracy of broadcasts and cable programmes ie.

end user license agreement. etc 121 .Types of Piracy    End user or corporate copying Counterfeiting Hard disk loading-OS installed without supplying original CDs. certificate of authenticity.

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 .

exposes or offers for sale or hire any infringing copy. c) distributes infringing copies. d) possesses. otherwise that for his private and domestic use. b) sells.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. 124     . lets for hire or by way of trade. any infringing copy.

S 41 of the Copyright Act 1987      e) by way of trade. exhibits in public any infringing copy. 125 . i) removes or alters any electronic rights management information without authority. f) imports in Malaysia. h) circumvents or causes the circumvention of any effective technological measures. g) makes or has in possession any contrivance used or intended to be used for the purposes of making infringing copy. otherwise that for his private and domestic use. any infringing copy.

126 . 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. 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. be guilty of an offence.S 41 of the Copyright Act 1987   j) distributes.

Trade Description Act 1972(TDA)    The TDA prohibits the making of false trade descriptions. 127 . 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.

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 .

Failure to do so will amount to an offence. 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. 129 .Optical Disc Act 2000 (OPA)    Under this Act. The Act also requires the licensee to cause the optical disc to be marked with the manufacture code.

Statistics  s4 ODA 2000(producing OD without license): 2004 .6 cases and RM13.5 million in seizure value Annual Report of Ministry of Domestic Trade and Consumer Affairs  130 .5 million in seizure value 2005 .7 cases and RM27.Offences under Optical Discs Act 2000 .

in seizure value  Total of 22 cases and RM43.Statistics s19 ODA 2000(producing OD without displaying the Plant Code): 2004 .9 million in seizure value 2005 .5 cases and RM300.Offences under Optical Discs Act 2000 .2 million in seizure [2004-2005]   Annual Report of Ministry of Domestic Trade and Consumer Affaris 131 .4 cases and RM1.000/.

investment in the protection of IP rights has become increasingly vital to protect the competitive advantage accorded by IP rights. 132 .Conclusion    Malaysia provides a well established framework in the protection of IP rights. In view of the growing importance in Malaysia. Owners of IP rights should also remain proactive in enforcing their IP rights against infringement.

END Assisted by: Kenneshwaran Kandiah LLB(Hons) Sum Wai Hoe LLB(Hons) CLP 133 .

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