Copyright
How should people ensure they are protected against copyright infringement?
Copyright protection is governed under the Copyright Act 1987. There is no formal system of registration of copyright in Malaysia. The Copyright Amendment Act 2012 which came into operation on March 1, 2012, seeks to put in place a mechanism for a Register of Copyright which will contain all particulars relating to the copyright in a work.
It is advisable to document each creation of work which is eligible for copyright and affirm a statutory declaration stating the ownership and subsistence of copyright in the work. The statutory declaration is admissible in any proceedings in court and is prima facie evidence of the facts as stated therein.
What are the key challenges to copyright holders in your jurisdiction?
Enforcement of copyright by the owner has become more challenging, with infringers becoming more sophisticated due to the advancement of technology. This has increased the commercial trade of pirated goods by leaps and bounds.
What is the best way to deal with infringement?
Acts of infringement are actionable under criminal or civil actions. A civil mode of action is appropriate when the identity of the offending party is known and when they are financially able to pay any damages and costs sought by the copyright owner. Criminal prosecution under the Copyright Act 1987 grants the police and the enforcement division wider enforcement powers to enter premises when there is reasonable cause to suspect that the premises houses infringing copies, or equipment to make such copies.
The Amendment Act also seeks to extend the police’s rights to access computerised or digitalised data during an investigation. In addition, the Amendment Act includes prohibitions on recording of films on camcorders and a limitation on Internet service provider liability.
Counterfeiting
How big a problem is counterfeiting in your jurisdiction?
Counterfeiting activity affecting both international and domestic businesses has increased at an alarming rate, and has become a major concern in Malaysia. Apart from the infiltration of counterfeit branded goods including fashion, luxury wear and electronic and communication equipment, traditional health products and medicine have also been subject to imitation.
What are the best strategies for dealing with the problem?
An ideal strategy would be to work towards improving the public enforcement machinery with the setting up of special task forces and a more fully integrated enforcement system that combines the efforts of customs with enforcement under the Ministry, revenue collecting and consumer protection agencies and the IP owners in conducting raids and exercising border measure controls, in order to reduce the infiltration of counterfeit goods into the country.
While Malaysia is still perceived as one of the major transit ports for counterfeit goods, the Malaysian government’s efforts to curb counterfeits goods have been applauded internationally. In October 2011, the government launched a central database listing of the particulars of registered trademark holders (Basket of Brands) that would enable the enforcement division to take proactive measures against infringers of trademarks which are already on this list.
General
Are there any legislative changes to the IP regime that would make life easier for businesses?
The Trade Descriptions Act 2011 (which replaced the Trade Descriptions Act 1972) which came into force on November 1, 2011 is a powerful tool. A registered trademark owner may apply to the High Court for a trade description order so as to enlist the services of the enforcement division to conduct raids. Under the new act, the validity period of a trade description order has been reduced from five years to one year.
Karen Abraham jointly heads Shearn Delamore & Co’s IP and IT departments. She can be contacted at: karen@shearndelamore.com
Jyeshta Mahendran is a partner in the IP department of Shearn Delamore & Co. She can be contacted at: jyeshta@shearndelamore.com
Business brief, IP rights
