Engineers in Society

CCB40602

BEFORE INDEPENDENCE
- Prior 31 August 1957
- Most industries and factories were owned by
British Companies
- Main economic activities producing rubber, tin metal
and exporting sawn timber
1980s
- Major shift in the industrialization policy of Malaysia
(National Industrial Policy 1983)
- Transformation from agriculture to industrial nation
- Emphasis on Heavy Industry and R&D
 Engineers in Society
CCB40602

Only have a Trade Mark Act 1976

- Patents and industrial designs were required to be
filed, prosecuted in Britain
- Rapid development, saw the emergence of
importance of Intellectual Property Rights (IPRs)
- Patent Act 1986, Copyright Act 1987, Industrial
Design Act 1996, Geographical Indications Act 2000,
Layout-Designs Of Integrated Circuits Act 2000
Engineers in Society
CCB40602
 Engineers in Society
CCB40602

SEVERAL METHODS OF ENFORCING IPRs IN

M’SIA:

1. Civil Action
2. Criminal Action
3. Administrative Action
 Engineers in Society
CCB40602

CIVIL ACTION

Main objective of the civil action:

1. Injunction
To restrain the infringer from continuing the
infringement activities
 Engineers in Society
CCB40602

2. Delivery Up
Surrender all infringement products in his
possession, custody or control for the purpose of
Destruction
3. Damages
Compensate the plaintiff for the loses as a
consequences of the infringement made by the
defendant
 Engineers in Society
CCB40602

4. Account of Profits
Deprive defendant profits improperly made and
transfer it to the plaintiff

5. Public Apology
Seek a public apology for the act of infringement
 Engineers in Society
CCB40602

Other forms for IPR disputes can be heard

1. Arbitration (The Malaysian Arbitration Act, 2005)
Process in which the disputing parties present their
case to a panel of arbitrators ) who examine all the
evidence and then make a decision for the parties
2. Copyright Tribunal (Copyright Act 1987 (Act 332))
Power to hear limited; disputes on payment of
royalty and translation right
 Engineers in Society
CCB40602

CRIMINAL ACTION
- Only for infringement of copyright and trade mark
(via Trade Description Act 2011)
- Responsible party :
ENFORCEMENT DIVISION of the MINISTRY of
DOMESTIC TRADE COOPERATIVES AND
CONSUMERISM
- The owner of IPRS / his agent / authorized
representative can initiate the criminal action
 Engineers in Society
CCB40602

COPYRIGHT ACT 1987

- Offences under Section 41
- Raid and investigation carried out by the Assistant
Controller of Copyright
- Non compoundable offence
- Prosecution of criminal offence is carried out by
Deputy Public Prosecutor (DPP)
- Fine:
(RM2,000 < x < RM 20,000) / infringing copy, or
imprisonment < 5 yrs, or both
 Engineers in Society
CCB40602

TRADE DESCRIPTION ACT 2011

- Offences under Section 5

- Raid and investigation carried out by the Assistant
Controller of Trade Description
- Compoundable offence
- Only registered owner of a registered trade mark
under TMA 1976 can claim his rights in respect of
such TM are being infringed by the course of trade
 Engineers in Society
CCB40602

BOARDER MEASURES
- Compliance with TRIPs Agreement (Art 51 to 60)
- Enforcement mechanism for curbing counterfeiting
activities at the boarder
- Related IPR legislation :
Trade Marks Act 1976
Copyright Act 1987
Trade Description Act 2011
 Engineers in Society
CCB40602

COPYRIGHT ACT 1987

- Fine:
(RM2,000 < x < RM 20,000) / infringing copy, or
imprisonment < 5 yrs, or both
TRADE DESCRIPTION ACT 2011 & TRADE
DESCRIPTION
(OPTICAL DISK LABEL) ORDER 2011
- Fine:
Body Corporate : < RM 250,000)
Not Body Corporate : < RM 100,000) or imprisonment
< 3 yrs, or both
 Engineers in Society
CCB40602

Copyright (Amendment) 2011

1. Technological Protective Measure

2. ISP (Information Search Process) procedure
3. Anti-Camcording
 Engineers in Society
CCB40602

ADMINISTRATIVE ACTION

- MOU between the government and large shopping mall

- To include a clause in tenancy agreement:
“ the tenancy of the shop lot will be terminate if the shop is
found guilty of dealing with counterfeit goods.”
 Engineers in Society
CCB40602

FUTURE:

Difficulty in tracking infringement/counterfeit products

Issues in Copyright Piracy
1. Internet based piracy
2. Mobile piracy
3. Camcorder piracy
 Engineers in Society
CCB40602

COPYright prevents
COPYing of an original
work.
 Engineers in Society
CCB40602

There is a reverse engineering exception in our law

when it comes to artistic works of a technical nature. An
unauthorised 3-D copy/adaptation of an original
component will not constitute an infringement of the
copyright in that original component, provided that:
the original component was made available to the public
by the copyright owner (or with its consent); and the
original component has primarily, a utilitarian purpose,
and is made by an industrial process.
 Engineers in Society
CCB40602

Unfortunately, the question of whether the

intermediate drawings fall within the
reverse engineering exception and
therefore whether they can be made and
used in the reverse engineering process
has never been considered by our courts.
 Engineers in Society
CCB40602

What is clear however, is that to even have a

shot at being legal, drawings created in a
reverse engineering process can only be used
for the purpose of making the 3-D component,
they could not, for example, be published in a
book, tender invitation or used for any other
purpose.
 Engineers in Society
CCB40602

Specialist advice should be sought

about your specific circumstances.