Lim Zhi Jian, Bahari Yeow and Alex Choo of Rosli Dahlan Saravana Partnership on how Malaysia is responding to technological progress
‘The nation’s digital transformation agenda will also be fast-tracked, including measures such as the rapid adoption of digital technologies and closing the urban-rural digital divide.’
Those were the words of Malaysia’s Finance Minister, Tengku Datuk Seri Utama Zafrul Tengku Abdul Aziz with the unveiling of the nation’s 2023 Budget. The 2023 Budget is themed ‘Keluarga Malaysia, Makmur Bersama’ and will be driven by the 3Rs – Responsive, Responsible and Reformist.
While a lot to unpack, the 2023 Budget places significant emphasis and in fact focuses on digital connectivity. Under the second phase of the National Digital Network (JENDELA) project, the government will provide 100% internet coverage in populated areas and provide fibre optic coverage to nine million premises nationwide by 2025. This initiative involves a total investment of RM8 billion, including contributions from the industry. For 2023, the JENDELA initiative will provide RM700 million to implement digital connectivity for 47 industrial areas and nearly 3,700 schools.
Tenaga Nasional Berhad, the largest electricity utility in Malaysia will also pilot the implementation of rural internet by optimising its electrical cable network to provide high-speed broadband facilities. This project will potentially benefit over 60,000 rural residents.
Digital Nasional Berhad (DNB), a special purpose vehicle wholly owned by the Minister of Finance (Incorporated) will expand the 5G network throughout the country to cover 70% of highly populated areas. DNB plans to implement infrastructure expenditure worth RM1.3 billion in 2023.
DNB’s vision in implementing the country’s 5G aspirations received a major boost on 31 October 2022 with five mobile network operators executing their respective access agreements to lease DNB’s 5G network that is currently being rolled out. Safe to say Malaysians can expect better, faster and stronger internet access soon.
The Malaysian courts have gradually taken into account the realities of globalisation, spurred by the advancement of modern technology.
With the backdrop above, the world seems to be shrinking – everything at one’s fingertip. How then does this affect the intellectual property regime in Malaysia? Is Malaysia stuck in a rigid interpretation of the law where rights are only conferred within the confines of our jurisdiction? Or perhaps it may be time for Malaysia to embrace a more holistic and international approach.
The concept of territoriality of intellectual property rights may be traced back to 1996 where the Court of Appeal in Lim Yew Sing v Hummel International Sports & Leisure A/S held:
‘Trade mark law is very territorial in many aspects. So, it will be useful to keep in the forefront of our minds that, however distasteful it may be for a trader in one country to appropriate the mark of a foreign trader who is using that mark in a foreign country, there is nothing unlawful under the Trade Marks Act 1976 for a Malaysian trader to become the registered proprietor of a foreign mark used for similar foreign goods provided that the foreign mark has not been used at all in Malaysia.’
However, we would argue that the findings of Lim Yew Sing was decided at a time when trade mark law was arguably at its infancy and before Malaysia’s recognition of the Paris Convention and TRIPS.
Almost two decades after Lim Yew Sing, our apex Court in the case Yong Teng Hing B/S Hong Kong Trading Co & Anor v Walton International Ltd acknowledged that a more borderless approach ought to be employed by the courts when dealing with trade mark matters:
‘We would like to state here that after the Hummel case there has been a shift in direction and approach towards the acceptance of the reputation of foreign trade marks which would bar the registration by a proprietor of a mark that is similar thereto.’
The position adopted by the Federal Court was cited in approval in a more recent Court of Appeal decision in SRAM, Llc v Huan Schen Sdn Bhd where the Court held that confining ‘use’ of a trade mark to domestic use was an error of law.
This string of cases evidence one thing – the Malaysian courts have gradually taken into account the realities of globalisation, spurred by the advancement of modern technology. The more ‘international’ approach culminated in the coming into force of the Trademarks Act 2019, ratifying the Madrid Protocol. Now, foreign Madrid Protocol member countries as well as Malaysia can seamlessly apply for trade mark registration overseas through a single channel.
The ripple effects of progress in technology leading to a more accessible world is not confined to the trade mark regime. The Patents Act 1983 saw a major overhaul in 2022, in part due to the attempt at bringing Malaysia’s patent regime in compliance with the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure (Budapest Treaty).
Foreign Madrid Protocol member countries as well as Malaysia can seamlessly apply for trade mark registration overseas through a single channel.
Copyright too saw significant changes in 2022. The Copyrights Act 1987 was amended to give effect to Malaysia’s eventual participation in the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled (Marrakesh Treaty).
In just 2022, Malaysia has set the foundation for its eventual accession to two international treaties. We would argue that this is reflective of the mindset of our legislators and policymakers who are more cognisant of Malaysia’s international obligations towards the international community.
With 2022 coming to a close, Malaysians and foreigners alike should be excited for what’s to come in the following years as we collectively crawl our way out of the Covid-19 era and revitalise the global economy.
Authors
