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Transcript of EnforcementOfIPR

Enforcing your Intellectual Property Rights

By Lee Swee SengLLB, LLM, MBA ADVOCATE & SOLICITOR CERTIFIED MEDIATOR PATENT AGENT NOTARY PUBLIC Copyright www.leesweeseng.com sweeseng@tm.net.my

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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.2

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

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Patents

Patent Act 1983 Patent Regulations 1986 Provides 20 years legal protection to patent holders which includes exploitation of the patents, the assignment or transfer of rights and license contract.5

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. The Division will conduct the necessary investigations and prosecutions.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

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Patents

In accordance with TRIPS, 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

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Patent Infringement

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

Patent Remedies

Injunction Damages or account of profit Order of delivery up or destruction Declaration that the patent is valid and has been infringed

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Patent - Enforcement

Entitlement to damages from date of publication. 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 publication10

Copyright

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

Copyright

Act also provides for the performers 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.

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Copyright owners to take precautionCopyright owners are advised to make sure: authors name appears on all copies of literary, dramatic, musical works, etc publishers name appears on all copies copyright owners 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.

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

Remedies for Infringement of Copyright

Interlocutory Remedies; Court can issue interlocutory orders to prevent substantial injustice being done in the meantime.

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Remedies for Infringement of Copyright

Courts can issue: Interlocutory injunction Anton Pillar Order Norwich Pharmacal Order

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Copyright - Injunction

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

Copyright Various orders of injunctions

A mandatory order is to ask the Defendant to carry out some act ie. Asking Defendant to deliver up the infringing works to the Plaintiff. In deciding to grant an interlocutory injunction, 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 293.19

Copyright - Injunction

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

BASKIN ROBBINS INTERNATIONAL CO. & ANOR. V. AVONDAY SDN. BHD. [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 Defendants ice cream using the mark USA 31. To apply for an interlocutory injunction, the Plaintiff has to satisfy certain requirements under American Cyanamid case.21

BASKIN ROBBINS INTERNATIONAL CO. & ANOR. V. AVONDAY SDN. BHD. [1992] 2 CLJ 201 (Rep) [1992] 2 CLJ 1198

Hashim Yeop Sani J mentioned the case Prof Dr. A Kahar Bador & Ors v N Krishnan & Ors [1982] CLJ 630 (REP), stating that an interlocutory injunction is merely provisional and does not conclude a right. 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.

BASKIN ROBBINS INTERNATIONAL CO. & ANOR. V. AVONDAY SDN. BHD. [1992] 2 CLJ 201 (Rep) [1992] 2 CLJ 1198

The Court went on to apply the principles in American Cyanamid. The Court is satisfied that the claim is not frivolous or vexatious and there are serious issues to be tried. As to whether damages would be an adequate remedy, the Court opined that if the Plaintiff succeeds at the trial without this injunction, it would not be possible to assess the amount of23

BASKIN ROBBINS INTERNATIONAL CO. & ANOR. V. AVONDAY SDN. BHD. [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. However the injunction is not to put an end to the Defendants ice cream business. They can still market their product before they decided to adopt24

BASKIN ROBBINS INTERNATIONAL CO. & ANOR. V. AVONDAY SDN. BHD. [1992] 2 CLJ 201 (Rep) [1992] 2 CLJ 1198

the impugned mark USA 31. 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. Another factor is that the Plaintiff applied promptly hence the issue of statues quo being preserved only existed before the Defendant began25

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

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SAP(M) Sdn Bhd v I World HRM Net Sdn Bhd & Anor [2006] 2 MLJ 678their business in that manner. The Court allowed the Plaintiffs application for an interlocutory injunction against the Defendant. The alleged breach that the First Defendant and the Second Defendant had infringed the copyright in the said software by27

SAP(M) Sdn Bhd v I World HRM Net Sdn Bhd & Anor [2006] 2 MLJ 678communicating the software to a third party without the Plaintiffs consent. 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 Plaintiffs copyright in28

SAP(M) Sdn Bhd v I World HRM Net Sdn Bhd & Anor [2006] 2 MLJ 678the said software. The Court allowed the Plaintiffs application for interlocutory injunction as it would surely damage the Plaintiffs goodwill and reputation as any disruption of service would make the customers lose confidence in the Plaintiffs software.29

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. 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.30

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. The Defendants were not prejudiced as the delay was due to ongoing negotiations. (Laru