This document discusses intellectual property enforcement in Malaysia, both past and present. [1] It outlines the development of IP laws from before independence up until the 1980s transformation to an industrial nation. [2] The present involves civil, criminal, and administrative methods of enforcement. Civil methods seek injunctions, damages, and account of profits. Criminal enforcement occurs under copyright and trademark laws. Administrative actions include MOUs with malls to terminate leases of stores dealing in counterfeits. The future may involve issues like internet piracy and employing anti-money laundering laws against organized IP crime.

1. PATEN PRAKTIS DAN PROSEDUR II
UUUK 5375
DISSERTATION :
INTELLECTUAL PROPERTY ENFORCEMENT
IN MALAYSIA
LECTURER :
PN. NORHAYATI HASSAN
STUDENT :
MOHAMED AZNANSHAH BIN KHALID
GP01209

2. PAST
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

3. contd…
- 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 IPRs
- Patent Act 1986, Copyright Act 1987, Industrial
Design Act 1996, Geographical Indications Act 2000,
Layout-Designs Of Integrated Circuits Act 2000

4. PRESENT
SEVERAL METHODS OF ENFORCING IPRs IN M’SIA:
1. Civil Action
2. Criminal Action
3. Administrative Action
CIVIL ACTION
Main objective of the civil action:
7. Injunction
To restrain the infringer from continuing the
infringement activities

5. contd…
2. Delivery Up
Surrender all infringement products in his
possession, custody or control for the purpose of
destruction
3. Damages
Compensate the plaintif for the loses as a
consequences of the infringement made by the
defendant

6. contd…
4. Account of Profits
Deprive defendant profits improperly made and
transfer it the plaintif
5. Public Apology
Seek a public apology for the act of infringement

7. HIERARCHY OF COURTS AND JURISDICTION
Final Appellate
FEDERAL COURT
Court
COURT OF APPEAL
HIGH COURT / IP COURT Original Jurisdiction

8. Other forms for IPR disputes can be heard
1. Arbitration
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
Power to hear limited; disputes on payment of
royalty and translation right

9. CRIMINAL ACTION
- FOC
- 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

10. contd…
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

11. contd…
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

12. contd…

13. Other Legislation…
OPTICAL DISK ACT 2000
- Upstream control measure
- Licensing of the manufacturer of optical disk
- Method used:
1. SID Code
2. Exemplar Program

14. contd…
TRADE DESCRIPTION (OPTICAL DISK LABEL) ORDER
2011
- Downstream control measure
- The Order makes it a crime to supply an optical disk
without a requisite label
- Method used:
1. Only owner/authorized personnel can apply
2. Enable consumers to identify genuine optical disk

15. contd…
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

16. HIERARCHY OF COURTS AND JURISDICTION
Final Appellate
FEDERAL COURT
Court
COURT OF APPEAL
HIGH COURT
SESSION COURT / IP
Original Jurisdiction
COURT

17. contd…
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

18. contd…
OPTICAL DISC ACT 2000
- Fine:
Body Corporate : < RM 500,000)
Not Body Corporate : < RM 250,000) or imprisonment
< 3 yrs, or both

19. 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.”

20. FUTURE
 Difficulty in tracking infringement/counterfeit
products
Issues in Copyright Piracy
1. Internet based piracy
2. Mobile piracy
3. Camcorder piracy
Copyright (Amendment) 2011
1. Technological Protective Measure
2. ISP procedure
3. Anti-Camcording

21. contd…
 Organized crime
- Large scale illegal commercial organization
- Government should employ Anti-Money Laundering
and Anti-Terrorism Financing Act 2001 (AMLATFA)

22. irfanaqil2@gmail.com.my