2012: Malaysia’s Push for IP Change
The year 2012 is expected to be a year full of change to the IP regime as it is the culmination of a number of years of discussion and consultation in the ever-continuing process of bringing the country’s domestic legislation and practice in line with international IP standards and obligations. Boosting this process is the Prime Minister’s initiative in implementing the Economic Transformation Programme, a programme targeted to transform the country to a high-income nation by 2020 and which has spearheaded a highly ambitious agenda of incentives and schemes to this end. Malaysia is thus faced with a challenge to modify its laws within a short space of time and the last few years have seen the introduction of many new laws (e.g. competition, data protection, anti-terrorism laws, etc.) and the modification of the old in many areas with IP not lagging behind in this move.
On April 26th 2011, Malaysia celebrated her 7th annual National Intellectual Property Day bearing the theme: “Intellectual Property – Driving Nation’s Competitiveness”. The celebrations received an overwhelming response, representing yet another step forward in this nation’s quest to increase the awareness and knowledge of the general public on matters concerning intellectual property.
On the legislative side, there has also been progress in the advancement of the field of intellectual property in Malaysia in the form of revamped legislation and proposed amendments made by the Ministry of Domestic Trade, Co-operatives and Consumerism to core intellectual property legislation such as the Copyright Act 1987. Proposed amendments to the legal framework of other core areas of intellectual property such as the Trade Marks Act 1976 and the Patents Act 1983 are in the process of being finalized and are expected to be tabled in Parliament in 2012. It is envisaged that there will also be a repeal of the Industrial Designs Act replacing it with a new Act. A bird’s eye view of some of the changes are described here in this article.
Copyright (Amendment) Bill 2010 (“the Copyright (Amendment) Bill”)
Copyright is afforded protection in Malaysia by the Copyright Act. The Copyright (Amendment) Bill was recently passed by the Dewan Rakyat (House of Representatives) on October 3rd 2011 and is currently being tabled before the Dewan Negara (Senate). Some amendments of note include provisions that regulate Collective Management Organisations (CMOs) and the establishment of a voluntary register of copyright where copyright owners may deposit their copyrighted works. The basis of existence of copyright is still preserved by the Act but the registration process allows a convenient way of establishing evidence of ownership as a certified extract from the register of copyright is considered prima facie evidence of the owner’s copyright and is admissible in the courts.
Other amendments include provisions that limit the liability of internet service providers and extend the current powers of search and seizure by authorized officers under section 45 of the Copyright Act. In a bid to combat piracy, the Copyright (Amendment) Bill also includes anti-camcording provisions whereby any person operating an audiovisual recording device in a screening room to record any film in whole or in part shall be guilty of an offence punishable by imprisonment or a fine or both.
Trade Marks (Amendments) Regulations 2011 (“the Trade Marks (Amendments) Regulations”) Patents (Amendments) Regulations 2011 (“the Patents (Amendments) Regulations”)
The Trade Marks (Amendments) Regulations and the Patents (Amendments) Regulations were recently amended and these amendments apply to all applications for trade mark and patents filed from February 15th 2011 onwards. The amendments bring about several important changes to the Trade Marks Regulations 1997 and the Patents Regulations 1986.
The amendments, which mainly seek to improve the trade marks registration and patents grant process in Malaysia, include formalized requirements, expedited examination, reduced response times, electronic filing services and revision of official fees.
With the introduction of the expedited examination process, eligible applicants may potentially receive trade mark registrations within 6 months and 3 weeks from the date of filing and patent grants within 20 months from the date of filing, provided that all statutory requirements are complied with and no adverse reports are issued. However, the eligibility for expedited examination is restricted to satisfaction of certain criteria e.g. infringement in the marketplace.
In addition to these amendments which came into force earlier this year with the primary purpose of shortening the time periods for registration/grant, the authorities will also be revamping the principal legislation for trade marks and patents in a substantial manner. In the case of trade marks, it is expected that the new provisions will cover, amongst others, the introduction of non-traditional trade marks, securitization of trade marks as assets and the Madrid Protocol. For patents, the amendments are expected to include securitization of patents, the inclusion of innocent infringement and accession to the Budapest Treaty. The bills amending the two legislation are in the process of being drafted and are targeted for presentation to Parliament in the first half of 2012.
Industrial Designs Act
There have been several attempts to amend the Act over the past few years and the authorities now intend to repeal the Act. The new bill is expected to be tabled in Parliament in 2012 and it is likely that it will cover major changes to the meaning of novelty (to replace ‘local novelty’ with ‘novelty worldwide’) increases in the terms of protection from 15 years to 25 years, an increase in the grace period for disclosure and a possible ‘widening’ of the concept of design (from industrial design to design).
Trade Descriptions Act 2011 (“the Trade Descriptions Act”)
The Trade Descriptions Act came into force on November 1st 2011, replacing the previous Trade Descriptions Act 1976. It is a piece of legislation that prohibits the use of false trade descriptions on goods and services and insofar as IP is concerned, has traditionally been relied on as one of the legal tools used to combat piracy in Malaysia. With regard to counterfeit goods, there is now a presumption of law that any person dealing with goods bearing a mark identical to that of a registered trade mark will be deemed to have applied, supplied or offered to supply goods bearing a false trade description. Other changes to the Trade Descriptions Act include harsher penalties in the form of heavier fines to be imposed on individuals and bodies corporate with the amounts doubled for repeat offences.
The IP community looks toward the year 2012 with great interest, and some with trepidation, as the changes contemplated are significant. Nevertheless, change is necessary as Malaysia heads towards its goal to be more competitive and to ensure a strong IP support system for the business community. The effects will be more apparent once the amendments to the legislation have been drafted and made public.
Charmayne Ong is a Partner in the Intellectual Property Division of SKRINE. She is a registered Patent Agent, Design Agent and Trade Mark Agent in Malaysia. Charmayne’s areas of practice include registration of trademarks and general advisory work relating to IP rights: trade mark, copyright, industrial design rights and patents. Her experience involves advising on and drafting of contracts in intellectual property (e.g licensing, franchising, distributorships and contract). Charmayne was nominated as one of AsiaLaw’s Leading Lawyers 2009, 2010 and 2011 and is listed as a leading individual in Intellectual Property for Chambers Asia 2009, 2010 and 2011. Charmayne can be contacted on +603 2081 3999 ext 813 or by email at email@example.com