Trademarks
Service marks were introduced into Malaysian law by the Trademarks (Amendment Act) 1994, with effect from 1st December 1997, in compliance with TRIPS. The Act also made certain procedural simplifications and allowed priority to be claimed in Malaysia on the basis of a first application in the preceding 6 months in a Paris Convention country.
Copyright
Complaints in 1998 about lax copyright enforcement and low fines resulted in the response that too few international companies appear in court to substantiate claims that their rights have been infringed. The Malaysian Government recently stated that infringers pleading guilty tend to get lower penalties without the attendance of IPR owners to substantiate their claims and press for stronger sentences. This encouragement to brand owners to commit fully to enforcement action should reduce future criticism.
The Copyright Amendment Act 1997 incorporated the WIPO Copyright Treaty and Phonogram and Performance Treaty into Malaysian copyright law.
The multi-media supercorridor
Malaysia's intent to be at the forefront of technology in the 21st century is evident from the proposal for an area of South Kuala Lumpur to be designated as a special region for software, new media, IT and communications industries. The physical infrastructure support and incentive packages provided are to be mirrored by the enactment of what are termed cyberlaws, covering diverse subjects including methods of electronic commerce and computer crimes.
The Copyright Amendment Act 1997 expands the definitions of the various copyright works protected by the Copyright Act 1987 to include previously undefined works such as multi-media products, which may consist of a variety of different copyright works. Copyright protection is increased through the inclusion of 'tables and compilations' as literary works, by providing protection for 'derivative works', granting copyright owners exclusive 'communication' rights and providing that infringement includes what is in effect unauthorised tampering with copyright works and associated electronic security.
Concerns have been expressed however about the absence of a domain name dispute resolution system. Perhaps there is to be reliance on the proposed international procedures.
Registered designs
Malaysia's Registered Designs Act 1996 has yet to come into force, although it is promised for 1998. It will provide that all new design registrations are filed in Malaysia. Previously registration in the UK covered Malaysia.
General
March 1998 saw the first ASEAN Intellectual Property Association international conference and general meeting in Kuala Lumpur. The government took the opportunity of launching the Intellectual Property Training Institute, a public body set up to train Malaysian judicial and administrative officers in IPR matters.
The Future
Gaps in Malaysia's IPR protection include cross-border measures. As yet there are no provisions enabling Customs to seize goods which infringe trademarks. It is possible to seek orders prohibiting the import of goods bearing false descriptions or goods infringing copyright although this does not happen in practice.
This position is clearly unsatisfactory; however the USTR does not view this as serious enough to warrant inclusion in their Section 301 Annual Review, so one assumes that the US at least, with its focus on copyright works, views Malaysia's IPR protection as satisfactory.
Nicholas Redfearn is a solicitor admitted in the United Kingdom and an IPR consultant at Rouse & Co International, Jakarta.
The content of this article is to provide only a general information on the subject. Legal advice should be sought for any specific circumstances.
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