Presentation on theme: "Enforcing Intellectual Property Rights in Malaysia"— Presentation transcript:
1 Enforcing Intellectual Property Rights in Malaysia Training of Trainers Programme organised by WIPO, MyIPO, MDeC, February 2011TEO BONG KWANGAdvocate & SolicitorRegistered Trade Mark, Patent and ID AgentManaging Partner,Wong Jin Nee & Teo
2 Road Map of the Talk Why enforcement is important The overall strategy Criminal enforcementCivil enforcement
3 Importance of Protecting and Enforcing IPRs Important for various reasons:Maintaining competitive edgeEnhance brand loyaltyProtect goodwill over brandGenerate more incomeMaintain & 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 goodwillTo be effective, such vigilance policy has to be implemented and practised by the top management and all level of marketing personnelThe employee should be the ear and eye for the trade mark owner
5 Overall Enforcement Approach Strategic planning and implementationBIG picture & holistic approachPolicingRegular and consistent enforcementInternal policyPublicityEngagement
6 How to Curb Infringing or Counterfeiting Activities You cannot eradicate them completely but you can definitely reduce them.Report suspected cases immediatelyBuy 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 EngagementEducation
8 Enforcement Steps Identifying instances of infringing activities Evaluating leadsGathering evidenceTaking action against offendersWarning noticeCease and Desist lettersCriminal raidCivil action
9 Two Main Enforcement Routes Criminal EnforcementCivil Enforcement
10 Criminal EnforcementCriminal sanctions (through Enforcement Division of the Ministry of Domestic Trade, Co-operatives and Consumerism) are key to protection and enforcement of IPRElement of fearDemonstrates gravity and seriousnessDeterrent sentences – fines and jail sentence
11 Enforcement under Trade Descriptions Act (‘TDA’) Prohibition against false trade descriptionsApplying a false trade descriptions to goodsSupplies or offers to supply goods to which a false trade description is appliedin 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 personPerson 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 SeizureProsecution of the infringer.
19 Notice before actionNormally, 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 ? SwordIs litigation necessary?Infringer refuses to comply with C&DTo avoid an image of “paper tiger”Right to sueRecordal of Assignment?Registered UserExclusive LicenseeCheck your weaponsAny flaws – e.g. non-use for 3 yearsAbility to substantiate claims based on records?Aggressive but not recklessAim for quick result and adopt pragmatic approachSummary judgmentShieldAny way to avoid litigationSettlement on a without admission of liability basis?Licensing/acquisition?Challenge validity of IPR?Investigate defences availableCan someone else pay?Source of supplyWarranties/Indemnity provided by suppliersDo 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 infringementThat the defendant has in his possession incriminating documents or evidenceThat there is a real possibility that such evidence may be destroyed
25 Ways to End Litigation Quick Interlocutory InjunctionAnton Piller OrderSummary judgmentEarly 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  4 MLJ 127;  7 CLJ 413)Cease and desist letter sentLetter of Undertaking (LOU) signedCriminal enforcement raid doneCivil suit filed based on result of criminal raidsSummary judgment obtainedDirectors permanently injuncted as wellPayment of damagesPublication of apology ad
27 Case Study: Leo Pharmaceutical Products Ltd A/S v Kota Pharma (M) Sdn Bhd (reported in  5 MLJ 703)Attempts were made to settle - failedAction for trade mark infringement and passing off filedAttempt for interlocutory injunction failedFull trial completed – succeeded on both causes of actionSubstantial damages assessed and agreed
28 Case Study: Leo Pharmaceutical Products Ltd A/S v Kota Pharma (M) Sdn Bhd (reported in  5 MLJ 703)Fucidin v Axcel FusidicFucicort v Axcel Fusi-corte
30 Wong Jin Nee & Teo, February 2011 THANK YOU!Mr. Teo Bong KwangTel :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