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Enforcing your Intellectual Property Rights

By Lee Swee Seng LLB, LLM, MBA ADVOCATE & SOLICITOR CERTIFIED MEDIATOR PATENT AGENT NOTARY PUBLIC Copyright www.leesweeseng.com sweeseng@tm.net.my. Enforcing your Intellectual Property Rights. Intellectual Property.

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Enforcing your Intellectual Property Rights

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  1. By Lee Swee Seng LLB, LLM, MBA ADVOCATE & SOLICITOR CERTIFIED MEDIATOR PATENT AGENT NOTARY PUBLIC Copyright www.leesweeseng.com sweeseng@tm.net.my Enforcing your Intellectual Property Rights

  2. 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.

  3. 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 2000 and Optical Discs Act 2000.

  4. Intellectual Property Rights • Main IP Rights: • Patents • Copyright • Trademark • Industrial Designs • Trade Secret & Confidential Information

  5. 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.

  6. 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

  7. 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

  8. 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.

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

  10. 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 publication

  11. 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 subsist for 50 years

  12. Copyright • Act also provides for the performer’s 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.

  13. Copyright owners to take precaution • Copyright owners are advised to make sure: • authors’ name appears on all copies of literary, dramatic, musical works, etc • publisher’s name appears on all copies • copyright owner’s name and date of first publication and the country of first publication appears on sound recordings and computer programmes

  14. Copyright owners to take pre-caution • 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.

  15. 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 to enforce their copyright through Court.

  16. Remedies for Infringement of Copyright • Interlocutory Remedies; • Court can issue interlocutory orders to prevent substantial injustice being done in the meantime.

  17. Remedies for Infringement of Copyright • Courts can issue: • Interlocutory injunction • Anton Pillar Order • Norwich Pharmacal Order

  18. 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.

  19. 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.

  20. 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.

  21. 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 Defendant’s ice cream using the mark USA 31. • To apply for an interlocutory injunction, the Plaintiff has to satisfy certain requirements under American Cyanamid case.

  22. 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 it.

  23. 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 of

  24. 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 Defendant’s ice cream business. They can still market their product before they decided to adopt

  25. 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 began

  26. 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.

  27. SAP(M) Sdn Bhd v I World HRM Net Sdn Bhd & Anor [2006] 2 MLJ 678 their business in that manner. • The Court allowed the Plaintiff’s 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 by

  28. SAP(M) Sdn Bhd v I World HRM Net Sdn Bhd & Anor [2006] 2 MLJ 678 communicating the software to a third party without the Plaintiff’s 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 Plaintiff’s copyright in

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

  30. 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.

  31. 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’. (Larut Consolidation Bhd v Khoo Ee Bee [1997] 5 MLJ 77- delay for 2 years was excused)

  32. “Delay defeats Equity” • Evercrisp Snack Products (M) Sdn Bhd & Anor v Sweeties Food Industries Sdn Bhd [1979] 1 LNS 19 • The Plaintiff applied for an interlocutory injunction that the Defendants be restrained until the trial of the action of passing off.

  33. Evercrisp Snack Products (M) Sdn Bhd & Anor v Sweeties Food Industries Sdn Bhd [1979] 1 LNS 19 • But the Court HELD that there was unreasonable delay in applying for the relief and the delay was not satisfactorily explained thus dismissing the motion to apply for an interim injunction.

  34. Copyright - Anton Pillar Order • The Anton Pillar Order was named after the case, Anton Pillar KG v Manufacturing Process[1976] 1 Ch 55 whereby it permits the Plaintiff to enter the Defendant’s premises to inspect the relevant documents and to remove them (search & seizure).

  35. Copyright - Anton Pillar Order • In the case above, the Court opined that there must be a balance between the Plaintiffs claim that the evidence may be destroyed and the Defendants claim that there should be no invasion of privacy.

  36. Copyright - Anton Pillar Order • To apply for Anton Pillar Order, the Plaintiff must show he has a strong prima facie case, the damage caused is very serious, there is clear evidence the Defendants have in their possession the incriminating document and real possibility that they may destroy the materials.

  37. Copyright-Norwich Pharmacal Order • The Norwich Pharmacal Order which originated from Norwich Pharmacal Co. and Others v. Commissioners of Customs and Excise[1973] 2 All ER 943 aids the Plaintiff to compel a third party to reveal information so the Plaintiff may ascertain the actual wrongdoers.

  38. Copyright-Norwich Pharmacal Order • The House of Lords HELD that where a person is innocently involved in the wrongdoing act of a third party, he is under a duty to assist the Plaintiff by releasing the identity of the wrongdoers but the he may not be liable to the Plaintiff.

  39. ESPL (M) Sdn Bhd v Harbert International EST Sdn Bhd [2003] 3 CLJ 864 • The Plaintiff had obtained by way of ex- parte application a Norwich Pharmacal Order and an Anton Pillar Order against the Defendant. • In the light of the above facts, the Defendant applied to set aside the said Orders on the following grounds:

  40. ESPL (M) Sdn Bhd v Harbert International EST Sdn Bhd [2003] 3 CLJ 864 • a) The Norwich Pharmacal Order should have been made inter parte instead of ex parte. • b) The Plaintiff who after having failed to subpoena the Defendant to produce documents, decided to apply for Norwich Pharmacal Order, was clearly committing an abuse of the process of the court.

  41. ESPL (M) Sdn Bhd v Harbert International EST Sdn Bhd [2003] 3 CLJ 864 • c) In respect of the application to set aside the Anton Pillar Order, the Plaintiff could not show any risk that there is a risk of the documents being destroyed. • Therefore, the Court arrived at the decision that the Defendant’s application to set aside be granted.

  42. Copyright - Final Remedies • After liability for copyright has been established, the Court may grant final remedies: • Permanent injunction • Order for delivery of infringing copies • Inquiry to damages or an account of profit

  43. Copyright - Damages • The basic measure for damages is the depreciation caused by the infringement, exploitation of the copyright owner’s work, ‘going market rate’, applicable royalty rate, etc.

  44. Copyright - Damages • Since copyright infringement is a tort, rules of causation and remoteness will apply ie. Whether loss was in fact caused by infringement and whether loss was foreseeable.

  45. Copyright - Damages • If the copyright work is circulated in the market, then the Plaintiff may calculate damages via loss of profits. • The Plaintiff has the option to choose whether he wants an account of profits or having damages assessed.

  46. Copyright - Damages • The Plaintiff may ask the Defendant to account for his profits made via sale of infringing copies and to have them confiscated.

  47. Copyright - Offences • In addition to civil suit, s41 Copyright Act 1987 made certain infringing acts an offence. • The provision covers sales, distribution, possession, exhibition, imports of the infringing copy shall be guilty of an offence and shall on conviction be liable to a fine of not less than two thousand

  48. Copyright - Offences ringgit and not more than twenty thousand ringgit for each infringing copy, or to imprisonment for a term not exceeding five years or to both.

  49. Copyright - Offences • Any person who causes a literary or musical work to be performed in public shall be guilty of an offence under this subsection unless he is able to prove that he had acted in good faith and had no reasonable grounds for supposing that copyright would or might thereby be infringed [s41(3)]

  50. Copyright - Offences • s44 allows an Inspector to enter into premises with a warrant to search and inspect infringed goods and to seize and remove them under s45 but a list must made of the goods seized as required under s46. • Remedies under criminal proceedings are fines and jail sentences and not to recover monetary compensation.

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