MALAYSIA

MALAYSIA (MY) & SINGAPORE INTELLECTUAL PROPERTY NEWS FROM HENRY GOH & CO SDN. BHD.

DESIGNS
By Jerry J. Day

MALAYSIA’S OWN INDUSTRIAL DESIGNS LAW

Malaysia’s new Industrial Designs Act came into force on  1st September 1999. The new law replaces the existing automatic extension to Malaysia of United Kingdom Registered Designs. Key features of the new designs law are a local novelty standard, provision for claiming priority from the first application made in or for another Paris Convention country (the priority period is 6 months maximum), and acceptance of multiple-design applications.

A United Kingdom Registered Design that is registered and in force immediately before 1st September 1999 will continue to extend to Malaysia, but will now be subject to the payment of renewal fees in Malaysia every 5 years.

A United Kingdom Registered Design application that is pending immediately before 1st September 1999 may be made the subject of a Malaysian application under the new Act within one year of that date. Such an application will be accorded the priority date of the United Kingdom application.
 

COPYRIGHT
By Clara C.F. Yip

COPYRIGHT IN COMPUTER SOFTWARE IN MALAYSIA

Part II - Infringement & Offences

Computer software in any form is protected by copyright in Malaysia. This being the case, the 1987 Copyright Act (“the principal Act”) confers copyright owners of computer programs the same exclusive rights and subjects this broad protection to the same fair-use exceptions as in the case of any other literary work.

Of significance is the prohibition introduced by the 1997 Copyright (Amendment) Act on the communication to the public of the whole work or a substantial part thereof, either in its original or derivative form, without the copyright owner’s consent. Any commercial rental to the public without such consent is also regarded as a violation.

In keeping abreast with the rapid advances in computer technology, the amending Act has defined “communication to the public” to mean “the transmission of a work through wire or wireless means to the public, including the making available of a work to the public in such a way that members of the public may access the work from a place and at a time individually chosen by them”.

This definition is now broad enough to bring within the framework of the principal Act, traditional forms of broadcast such as TV/radio transmissions as well as amongst others, Internet transmissions.

The principal Act (as amended) sets forth specific limitations/exceptions relating to computer programs:-

(i) In the absence of any express direction from the copyright owner, the principal Act permits the making of a back-up copy of a computer program by or on behalf of the owner of the original copy of the program but only as a precautionary measure in the event that the original copy is “lost, destroyed or rendered unusable” and provided that the back-up copy is made from a legitimate copy of the program;

(ii) It is also not a violation of the copyright owner’s rights for anyone to engage in the commercial rental of computer programs where the program is not the essential object of the rental.

The principal Act already imposes primary liability on those found violating any of the owner’s exclusive rights, and secondary liability on importers of infringing articles. In addition, protection against acts of circumvention are now provided by the 1997 amendment. Hence, a copyright owner can effectively restrain anyone from circumventing technological protection for copyrighted works or from enabling another to do the same. This restriction protects the copyright owner against the conduct of circumvention and arguably, the technologies that may be used for the purposes of circumvention.

The 1997 (Amendment) Act also seeks to preserve the integrity of electronic rights management information (ERMI) by prohibiting the removal or alteration of ERMI and the commercial dealings or transmission to the public of works knowing that the ERMI has been tampered with. However, such conduct or dealing will not be caught by this prohibition if it is carried out without actual or implied knowledge that this will “induce, enable, facilitate or conceal” copyright infringement.

“Rights management information” is characterized as information identifying the works, the author’s name, the owner’s name, the terms and conditions of use of the work, any numbers or codes that represent such information, when any of these items of information is attached to a copy of a work or appears in connection with the communication of a work to the public.

Action against infringers may be taken by way of civil proceedings instituted by the copyright owner. Criminal offences under the principal Act including acts of circumvention and tampering of ERMI will also render the infringer liable to criminal prosecution and conviction unless he can make use of the defence of good faith and show that he had no reasonable grounds for supposing that copyright would or might thereby be infringed.

SINGARPORE

TRADE MARKS
By Neville Young & Tham Sau Yin

NEW SINGAPORE TRADE MARKS ACT ENTERS INTO FORCE

INTRODUCTION
The new Singapore Trade Marks Act 1998 (“the new Act”) came into operation on 15th January 1999. Many sections of the new Act are very similar to those of the UK Trade Marks Act 1994.

The following is a summary of some of  the important changes introduced by the new Act and Rules:

DEFINITION OF A REGISTRABLE TRADEMARK
A trade mark is defined as any visually perceptible sign capable of being represented graphically, and which is capable of distinguishing goods or services dealt with or provided in the course of trade by one person from goods or services so dealt with or provided by any other person. A “sign”  includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof. Thus the definition of a “trade mark” has been broadened to now include shape, colour and aspect of packaging.  As the mark must be “visually perceptible”, it would appear that smells, sounds or tastes are not registrable.

ABOLITION OF THE TWO PART REGISTER
The Part A and Part B Registers have been replaced by a single Register.  The level of distinctiveness required for entry in the new register will apparently be tested by the words “capable of distinguishing” included in the above definition of a trade mark.  This was the level of distinctiveness required for entry into the old Part B Register.

APPLICATION PROCEDURE
The applicant must declare on the application Form that the trade mark is being used in the course of trade, by the applicant or with his consent, in relation to the goods or service stated, or that there is a bona fide intention to use the mark.

Although there are provisions for filing a multiple-class trade mark application, each class will be allocated its own application number and thus examined individually.

ALTERATION
There are more restrictive provisions for amending a trade mark application.  An application may only be amended by correcting the name or address of the applicant, correcting errors of wording or copying, or correcting obvious mistakes.  The corrections must not substantially affect the identity of the trade mark or extend the goods or services covered by the application.

A registered trade mark may only be amended where the mark includes the proprietor’s name or address and the amendment is limited to changes of the name or address which does not substantially affect the identity of the mark.

NON-USE
The onus of proving use of a trade mark now rests with the proprietor of the mark.

DISCLAIMER OR LIMITATION
Disclaimers and limitations are now made at the applicant’s option.

ASSIGNMENTS AND LICENSING
The concept of registered users under the old Act  has been abolished and is replaced by licensee provisions.

There would appear to be good reason to register an assignment or a license as soon as possible. An unregistered assignment or license is ineffective against a person acquiring a conflicting interest in the registered mark in ignorance of the assignment or license.

PROTECTION OF WELL-KNOWN MARKS
There are provisions relating to a well known mark entitled to protection under the Paris Convention or TRIPS Agreement.  The mark must be well known in Singapore as being the mark of a proprietor who is a national of a Convention country, or is domiciled in, or has a real and effective industrial or commercial establishment in a Convention country. The person or entity need not carry on business, or have any goodwill in Singapore. The proprietor of a well-known mark is entitled to an injunction to restrain the use in the course of trade of an identical or similar mark in Singapore in relation to identical or similar goods or services and which is likely to cause confusion.

TRANSITIONAL PROVISIONS
Existing registered marks, whether registered in part A or part B of the register, are deemed to be registered trade marks under the new Act.

The old law continues to apply in relation to infringements committed before the commencement of the new Act.

It is not an infringement of an existing registered trade mark to continue after commencement of the new Act, any use which did not amount to infringement of the existing registered trade mark under the old law.

NEW SINGAPORE CEO

We are pleased to welcome Mr. Neville Young, an ex-patent examiner of the Australian Patents Registry and a registered Australian patent and trademark attorney, as the latest addition to the Henry Goh group of intellectual property practice. Mr. Young is now heading our Singapore firm and apart from daily office administration, he handles our clients’ Singapore patent, trademark and industrial design matters. All clients and associates seeking intellectual property protection in Singapore are advised to refer their inquiries directly to Mr. Young at the Singapore office.

HENRY GOH VOTED BEST PATENT FIRM AGAIN

The current year’s emerging market survey statistics compiled and published by Managing Intellectual Property establishes our company’s standing as the No.1 Patent Firm in Malaysia for the second consecutive year. The Award was officially presented to our CEO and President, Mr. Henry Goh at a separate ceremony coinciding with the INTA Meeting in Seattle in May 1999 and hosted by the Euromoney Legal Publications Group. We wish to record a note of thanks to all those who have given us their unwavering support.

On the trademark scene, our company was listed as one of the top five trademark firms in Malaysia for 1999.

PATENT AGENTS EXAM RESULTS

Congratulations to our colleague, Mr. Dave Wyatt who passed the previous Patent Agents Examination set by the Ministry of Domestic Trade and Consumer Affairs and subsequently obtained his Malaysian patent agent licence. For the record, Mr. Wyatt is the first non-Malaysian to be registered locally as a patent agent. He is a UK Chartered Patent Agent and a European Patent Attorney who has been practising in the patent profession for over 10 years.

FIGURE THIS OUT

According to statistics provided by the Malaysian Registry of Patents, patent and utility innovation filings in Malaysia fell by 7% in 1998 instead of rising by about 15% if the trend up to 1997 had been maintained. The deficit is mostly caused by the reduction in filings from Japan (about 20%), Korea (about 50%) and Taiwan (about 20%).

Overall, the USA generated the highest number of filings, contributing about 36% of the applications filed since the Patents Act came into force on 1st October 1986, followed by Japan (about 20%), UK (about 9%) and Germany (about 7%) who together accounted for just over 70% of the total.

Interestingly, of the almost 42,800 applications filed over the same period, only about 10,700 were approved for grant. The reason for this is not known as no figures are available to indicate how many applications have been refused or withdrawn.
 
 

The information contained herein is based on data believed to be reliable and published in good faith to give a general overview of current intellectual property issues in Malaysia and Singapore.

Specific advice should be sought from Henry Goh & Co Sdn Bhd prior to relying on the contents of this newsletter.