Gan Partnership’s Alex Choo, Lim Zhi Jian and Bahari Yeow assess how well Malaysia is equipped to deal with intellectual property infringements
As Malaysia (and the world) continue to combat Covid-19, the turn of the new decade promises to be a better year as stakeholders are gradually acclimatising to the new normal. The embrace of the technological wave has become an inevitability, with industries digitalising and moving their products and services online.
However, businesses going virtual may have been a catalyst causing the increase in cases concerning counterfeit products – akin to opening to the proverbial Pandora’s box. In 2020 Malaysia recorded its highest number of counterfeit cases in the last five years; the highest number of sites blocked in the last three years; and saw a 123% increase in content removal from 2019.
In 2020 Malaysia recorded its highest number of counterfeit cases in the last five years; the highest number of sites blocked in the last three years; and saw a 123% increase in content removal from 2019.
With that being said, the legal industry and the courts are well positioned to address this looming threat. The courts have implemented avenues to allow proceedings to be conducted through remote communication technology. This can be observed as there is no dearth of new cases filed in the courts, particularly in intellectual property (‘IP’), where the specialised court has taken proactive steps enabling proceedings to continue amidst these trying times.
There are five predominant areas of IP namely trademark (often accompanied by passing off), copyright, patent (and its lesser-known sibling ie utility innovation), industrial design and geographical indication. An extension of IP would also encompass matters related to confidential information, trade secrets and know-how.
Trademark
A trademark is any sign, brand, logo or label affixed onto goods that may distinguish one’s goods from another. The Malaysian trademark regime saw a tectonic shift in 2019 when the new Trademarks Act 2019 (‘TMA 2019’) came into force on 27.12.2019, repealing the Trade Marks Act 1976 (‘TMA 1976’). The Malaysian trademark statute now contains 183 provisions (from only 84 provisions under the TMA 1976). The significant changes are, among others:
(1) the recognition of non-conventional trademarks (eg shape of goods or their packaging, colour, sound, scent, hologram, positioning and sequence of motion);
(2) enhancement of remedies available to brand owners who fall victim to trademark infringement (brand owners may now seek for damages and account of profits against the wrongdoer in certain circumstances);
(3) incorporation of the Madrid Protocol into our domestic legislation (this will allow a Malaysian trademark owner to potentially obtain trademark protection in 116 countries in one streamlined international application); and
(4) allow for trademark owners to collateralised their trademark.
Copyright
Copyright is the protection accorded to a person’s brainchild that is reduced to material form. This typically takes the form of literary works, musical works, artistic works, photographs, films or sound recordings and broadcasts. The main statute governing copyright in Malaysia is the Copyright Act 1987 (‘CA’). In the current environment where personal protective equipment (‘PPE’) and gloves are a limited commodity, there are an alarming amount of counterfeit PPE and gloves circulating in the market, and this has caused an increase in trademark and copyright dispute involving PPE and glove manufacturers.
Patent and utility innovation
Modern technology and communication have improved to such an extent that it may be anticipated that infringers will continue to devise ingenious schemes to springboard off IP owner’s goodwill.
Patent protects novel inventions which may come in the form of a product or a process. There are three requirements for a product or a process to be patentable, namely it has to be new, involves an inventive step and is industrially applicable. The Malaysian patent statute also provides for utility innovations (which is also known as minor patents or petty patents). The requirement of a utility innovation is merely that the innovation is new and that it is industrially applicable (without the need of inventive step). Much like patents, an owner of a granted utility innovation shall have exclusive rights to exploit said utility innovation for a total duration of 20 years.
Industrial design
Industrial design confers protection on features of shape, configuration, pattern or ornament which are judged solely by the eye. The requirement to obtain a registered industrial design is that it is new. It is to be noted that copyright regime and industrial design regime are mutually exclusive of one another – in other words a copyright cannot be simultaneously protected as an industrial design. Examples of famous industrial designs are the design of a Mini Cooper, coke contour bottle and Piaggio Vespa Scooter.
Geographical indication
Geographical indication means an indication which identifies any goods as originating in a country or territory where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin. Registration may be applied for by a person carrying on an activity as a producer in the geographical area, a competent authority or a trade organisation or association. Examples of geographical indications are Kobe Beef, Sabah Tea, Ceylon Tea, Cuban Cigar and Basmati Rice.
Intellectual Property Corporation of Malaysia (‘IPCM’)
Based on the above, Malaysia is equipped with an IP regime that confers protection in numerous forms of IP. The next question that falls for consideration would be ‘How does an IP owner take advantage of this readily available system?’
The IPCM is a statutory body tasked with the administration of IP in Malaysia. Its efforts have been laudable with IP owners being able to apply for registration of their IP rights online.
Conclusion
At the cusp of the fifth industrial revolution and with Malaysia ushering in the 12th Malaysia Plan, it is expected that ICT will continue to thrive, and we are only scratching the surface with digitisation and artificial intelligence.
Modern technology and communication have improved to such an extent that it may be anticipated that infringers will continue to devise ingenious schemes to springboard off IP owner’s goodwill.
Nevertheless, the courts equipped with the available IP legislations, coupled with the available infrastructure, are ready to meet these infringers head on. Much like the common law, IP law is not static and does not rest upon a Procrustean bed. It is organic, flexible and grows to meet changing conditions with dynamism.