Transcript Enforcing Intellectual Property Rights in Malaysia Training of Trainers Programme organised by WIPO, MyIPO, MDeC, 24 February 2011 TEO BONG KWANG Advocate & Solicitor Registered Trade Mark, Patent and.

Enforcing Intellectual Property
Rights in Malaysia
Training of Trainers
Programme
organised by WIPO, MyIPO,
MDeC,
24 February 2011
TEO BONG KWANG
Advocate & Solicitor
Registered Trade Mark, Patent and ID Agent
Managing Partner,
Wong Jin Nee & Teo
Road Map of the Talk
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Why enforcement is
important
The overall strategy
Criminal enforcement
Civil enforcement
Importance of Protecting
and Enforcing IPRs
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Important for various
reasons:
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Maintaining competitive
edge
Enhance brand loyalty
Protect goodwill over brand
Generate more income
Maintain & enhance value of
IP
Enforcement of IPRs – Some
Preliminary Observations
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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
Overall Enforcement
Approach
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Strategic planning and implementation
BIG picture & holistic approach
Policing
Regular and consistent enforcement
Internal policy
Publicity
Engagement
How to Curb Infringing or
Counterfeiting Activities
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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.
The Pyramid of an Effective
Enforcement
Enforcement
Engagement
Education
Enforcement Steps
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Identifying instances of
infringing activities
Evaluating leads
Gathering evidence
Taking action against
offenders
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Warning notice
Cease and Desist letters
Criminal raid
Civil action
Two Main Enforcement Routes
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Criminal Enforcement
Civil Enforcement
Criminal Enforcement
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Criminal sanctions (through
Enforcement Division of the Ministry
of Domestic Trade, Co-operatives
and Consumerism) are key to
protection and enforcement of IPR
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Element of fear
Demonstrates gravity and seriousness
Deterrent sentences – fines and jail
sentence
Enforcement under Trade Descriptions
Act (‘TDA’)
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Prohibition against false trade
descriptions
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Applying a false trade descriptions to
goods
Supplies or offers to supply goods to
which a false trade description is
applied
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in the course of business
What is Trade Description?
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Any indication whether given
directly or indirectly, and by
whatever means given of any of the
following matters with respect of
any goods:
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Nature or designation;
Approval by any person
Person by whom the goods is
manufactured, produced.
What is a False Trade Description?
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Any trade description which is false
to a material degree
Penalty for False Trade Description
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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.
Trade Description Order (“TDO”)
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An order issued by the High Court
declaring certain mark or get-up to
be a false trade description.
Peculiar to Malaysia
Effect and Importance of a TDO
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Effect of a TDO:
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It is admissible and conclusive proof of
a false trade description.
No need to prove that the mark or getup as specified in the TDO is a false
trade description again in any
proceedings under the TDA
Effect and Importance of a TDO
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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.
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CIVIL ACTION
Notice before action
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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….
Litigation: Going to War ?
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Sword
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Is litigation necessary?
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Right to sue
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Recordal of Assignment?
Registered User
Exclusive Licensee
Shield
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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
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Summary judgment
Any way to avoid litigation
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Settlement on a without
admission of liability basis?
Licensing/acquisition?
Challenge validity of IPR?
Investigate defences
available
Can someone else pay?
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Check your weapons
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Infringer refuses to comply
with C&D
To avoid an image of
“paper tiger”
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Source of supply
Warranties/Indemnity
provided by suppliers
Do not discount out of court
settlement at any stage
Pre-emptive remedy: Anton Piller Order
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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’).
Pre-emptive remedy: Anton Piller Order
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APO: the Nuclear Weapon of civil
procedure.
Pre-emptive remedy: Anton Piller Order
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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.
Pre-emptive remedy: Anton Piller Order
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Conditions for an Anton Piller Order:
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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
Ways to End Litigation Quick
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Interlocutory Injunction
Anton Piller Order
Summary judgment
Early trial? (instead of applying for
interlocutory injunction)
Case Study: Abercrombie & Fitch Co. & Anor v
Fashion Factory Outlet KL Sdn Bhd & Ors (reported
in [2008] 4 MLJ 127; [2008] 7 CLJ 413)
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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
Case Study: Leo Pharmaceutical Products Ltd A/S v
Kota Pharma (M) Sdn Bhd (reported in [2009] 5 MLJ
703)
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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
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
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Any other issues
Questions??
THANK YOU!
Mr. Teo Bong Kwang
Tel : +603 20923322
Email : [email protected]
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