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

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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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