1. Enforcing Intellectual Property Rights in Malaysia
Training of Trainers Programme organised by WIPO, MyIPO, MDeC, February 2011
TEO BONG KWANG
Advocate & Solicitor
Registered Trade Mark, Patent and ID Agent
Managing Partner,
Wong Jin Nee & Teo

2. Road Map of the Talk Why enforcement is important The overall strategy
Criminal enforcement
Civil enforcement

3. Importance of Protecting and Enforcing IPRs
Important for various reasons:
Maintaining competitive edge
Enhance brand loyalty
Protect goodwill over brand
Generate more income
Maintain & enhance value of IP

4. Enforcement of IPRs – Some Preliminary Observations
Crucial to adopt a vigilant attitude against improper use of IPRs so as to prevent dilution of prestige of brands or damage to goodwill
To be effective, such vigilance policy has to be implemented and practised by the top management and all level of marketing personnel
The employee should be the ear and eye for the trade mark owner

5. Overall Enforcement Approach
Strategic planning and implementation
BIG picture & holistic approach
Policing
Regular and consistent enforcement
Internal policy
Publicity
Engagement

6. How to Curb Infringing or Counterfeiting Activities
You cannot eradicate them completely but you can definitely reduce them.
Report suspected cases immediately
Buy trap purchases – keep receipts, jot down the identities of the sellers.
Consider surveillance/investigation against big target like wholesaler, importer.

7. The Pyramid of an Effective Enforcement
Engagement
Education

8. Enforcement Steps Identifying instances of infringing activities
Evaluating leads
Gathering evidence
Taking action against offenders
Warning notice
Cease and Desist letters
Criminal raid
Civil action

9. Two Main Enforcement Routes
Criminal Enforcement
Civil Enforcement

10. Criminal Enforcement
Criminal sanctions (through Enforcement Division of the Ministry of Domestic Trade, Co-operatives and Consumerism) are key to protection and enforcement of IPR
Element of fear
Demonstrates gravity and seriousness
Deterrent sentences – fines and jail sentence

11. Enforcement under Trade Descriptions Act (‘TDA’)
Prohibition against false trade descriptions
Applying a false trade descriptions to goods
Supplies or offers to supply goods to which a false trade description is applied
in the course of business

12. What is Trade Description?
Any indication whether given directly or indirectly, and by whatever means given of any of the following matters with respect of any goods:
Nature or designation;
Approval by any person
Person by whom the goods is manufactured, produced.

13. What is a False Trade Description?
Any trade description which is false to a material degree

14. Penalty for False Trade Description
For individual, on conviction, shall be liable to a fine not exceeding RM100,000 or to imprisonment for a term not exceeding 3 years or to both.
For corporate offender: a fine not exceeding RM250,000.

15. Trade Description Order (“TDO”)
An order issued by the High Court declaring certain mark or get-up to be a false trade description.
Peculiar to Malaysia

16. Effect and Importance of a TDO
Effect of a TDO:
It is admissible and conclusive proof of a false trade description.
No need to prove that the mark or get-up as specified in the TDO is a false trade description again in any proceedings under the TDA

17. Effect and Importance of a TDO
The IPR owner who obtains a TDO will go to the Enforcement Division (‘ED’), lodges a complaint regarding the infringing activities.
The officers of the ED are obliged to investigate the complaint and seize the infringing goods.
Search and Seizure
Prosecution of the infringer.

18. CIVIL ACTION

19. Notice before action
Normally, before a civil suit is instituted, the IPR owner will issue a cease and desist letter (‘C&D letter’)
Before instituting a civil suit, think about the following….

20. Litigation: Going to War ?
Sword
Is litigation necessary?
Infringer refuses to comply with C&D
To avoid an image of “paper tiger”
Right to sue
Recordal of Assignment?
Registered User
Exclusive Licensee
Check your weapons
Any flaws – e.g. non-use for 3 years
Ability to substantiate claims based on records?
Aggressive but not reckless
Aim for quick result and adopt pragmatic approach
Summary judgment
Shield
Any way to avoid litigation
Settlement on a without admission of liability basis?
Licensing/acquisition?
Challenge validity of IPR?
Investigate defences available
Can someone else pay?
Source of supply
Warranties/Indemnity provided by suppliers
Do not discount out of court settlement at any stage

21. Pre-emptive remedy: Anton Piller Order
If there is reason to believe that the Defendant may destroy the offending goods or evidence of infringement – IPR owner may consider filing for an Anton Piller Order (‘APO’).

22. Pre-emptive remedy: Anton Piller Order
APO: the Nuclear Weapon of civil procedure.

23. Pre-emptive remedy: Anton Piller Order
An order permitting the applicant to enter specified premises to inspect and take into custody documents or articles relevant to the action, which may be otherwise destroyed.
The main objective: to preserve material evidence.

24. Pre-emptive remedy: Anton Piller Order
Conditions for an Anton Piller Order:
The plaintiff has an extremely strong prima facie case that the defendant is liable for infringement
That the defendant has in his possession incriminating documents or evidence
That there is a real possibility that such evidence may be destroyed

25. Ways to End Litigation Quick
Interlocutory Injunction
Anton Piller Order
Summary judgment
Early trial? (instead of applying for interlocutory injunction)

26. Case Study: Abercrombie & Fitch Co
Case Study: Abercrombie & Fitch Co. & Anor v Fashion Factory Outlet KL Sdn Bhd & Ors (reported in [2008] 4 MLJ 127; [2008] 7 CLJ 413)
Cease and desist letter sent
Letter of Undertaking (LOU) signed
Criminal enforcement raid done
Civil suit filed based on result of criminal raids
Summary judgment obtained
Directors permanently injuncted as well
Payment of damages
Publication of apology ad

27. Case Study: Leo Pharmaceutical Products Ltd A/S v Kota Pharma (M) Sdn Bhd (reported in [2009] 5 MLJ 703)
Attempts were made to settle - failed
Action for trade mark infringement and passing off filed
Attempt for interlocutory injunction failed
Full trial completed – succeeded on both causes of action
Substantial damages assessed and agreed

28. Case Study: Leo Pharmaceutical Products Ltd A/S v Kota Pharma (M) Sdn Bhd (reported in [2009] 5 MLJ 703)
Fucidin v Axcel Fusidic
Fucicort v Axcel Fusi-corte

29. Any other issues
Questions??

30.  Wong Jin Nee & Teo, February 2011
THANK YOU!
Mr. Teo Bong Kwang
Tel :
Copyrights & Trade Marks of third parties in this presentation belong to the respective owners and are used solely for purpose of private study & a non-commercial basis
 Wong Jin Nee & Teo, February 2011