BUR-004 (MY) (open).pdf - FICPI

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EXCO/CO13/BUR/004-[MY]
(provisional section
E X C O M E E T I N G
C A R T A G E N A , 2 0 - 2 4 J A N U A R Y 2 0 1 3
WORKING DOCUMENT
TITLE: Country report for Malaysia
DRAWN UP BY: Benjamin J Thompson
TABLED TO: FICPI delegates
PURPOSE: For information
SECTION A: ACTIVITIES OF FICPI ASSOCIATION/SECTION
The information supplied in Section A will remain confidential on FICPI's website after the ExCo (will require
a password).
SECTION B: CHANGES IN LAW
Information supplied under Sections B and C will be published on FICPI's website after the ExCo and will be
available to the public.
B1. LEGISLATION
Please provide details of any changes to IP legislation (patent, trade mark, design and other) in your
country implemented or due to be implemented since the previous ExCo.
COPYRIGHT
The Copyright (Amendment) Act 2012 came into force on March 1, 2012. Among the salient provisions
introduced were provisions regarding:
a) Limitations and exceptions for Internet Service Providers and Application Service Providers;
b) Wider jurisdiction for the Copyright Tribunal;
c) Compliance with WIPO’s Performances and Phonograms Treaty as well as WIPO’s Copyright Treaty;
d) Clarification on Sections 13A, 13B and 13C with respect to the overlap between copyright and industrial
designs; and
e) Voluntary Notification on copyrighted works.
The Voluntary Notification of Copyright will be of particular interest to members. Under these Regulations,
authors of creative works and copyright owners can submit their works for registration with effect from 1st
of June 2012. The system allows authors to publicly claim authorship over works which are in either a
physical or digital form. It may be regarded a “Register” of sorts maintained by MyIPO, which while not
compulsory, effectively lowers the burden of proof upon plaintiffs asserting copyright in infringement
situations.
INDUSTRIAL DESIGNS
The Industrial Designs (Amendment) Regulations 2012 came into effect on 15th February 2012. The salient
points are:
(a) Introduction of Electronic filing - The applicant now has the option of electronic filing of ID applications.
(b) Language - Any document that contains or consists of characters other than Roman or in a language
other than the national language or English language must be accompanied by a translation or
transliteration in English.
(c) Revision upward of the official Fees.
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EXCO/CO13/BUR/004-[MY](provisional section)
B2. MAJOR CASES
Please provide brief details of any new case law in the field of patents, trade marks, design or other IP of
general interest.
A case of exceptional interest, a decision by the Federal Court (which is the highest Court).
LB (Lian Bee) Confectionery Sdn Bhd v QAF Ltd [2012] 4 MLJ 20
The Federal Court re-affirmed the decisions of the High Court and the Court of Appeal which held that use
of a registered trade mark by a licensee was deemed to be use of the mark by the proprietor of the mark
even though the license agreements were pending recordal by the Trade Mark Registry.
The Court found that the contractual activities between the respondent and its subsidiary was not refuted
and was undeniable. Accordingly, such activities amounted to use attributable to the respondent even
though the respondent’s subsidiary was not registered as the registered user until much later.
B3. OFFICIAL PRACTICE
Please provide details of any changes in official patent and trade mark office practice which would be of
general interest to other members.
No exceptional changes.
B4. PROPOSALS FOR CHANGES
Please provide details of any proposed changes in IP laws or practice and indicate if your National
Association/Section is involved in providing comments to such changes.
Would it be of assistance to have input from the CET on any proposed changes?
The Government has established an IP Financing Fund scheme of RM200 million. In response to this, there
are moves to introduce an IP Valuation model as the first step to assist financial institutions to refer to
specific methodologies in valuing IP Rights. There are also moves by MYIPO and MIPA to train and certify IP
Valuers.
It would be of assistance to have input from the CET on these developments. The provisional group has so
far not provided any comments to the authorities.
SECTION C: OTHER INFORMATION OF GENERAL INTEREST
Please provide details of any other information pertaining to your country or region that would be of
general interest to FICPI members and other IP practitioners browsing FICPI's website.
[End of document]
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