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Striking a Balance – Malaysia looking ahead

Intellectual Property Rights (IPR) enforcement will always be about striking a balance between the rights of the Intellectual Property (IP) proprietor and the general public’s right to freely use and share available resources and innovations and improve on existing technologies and ideas. IP laws in Malaysia have been in conformance with International IP laws as a member of the World Intellectual Property Organization (WIPO) and a signatory to the Paris Convention and Berne Convention which govern intellectual property rights such as patents, trademarks, industrial designs, copyright, geographical indications and layout designs of integrated circuits. As a signatory of the TRIPS (Trade – Related Aspects of Intellectual Property Rights) Agreement, Malaysian IP laws have been relevant and flexible to adapt to current commercial practice and public protection as proven by the latest debate over the rights of IP creators and public at the Intellectual Property Corporation of Malaysia (MyIPO).

An overhaul in Malaysian IP laws are to be affected by the end of the year according to MyIPO deputy director-general Assoc Prof Rohazar Wati Zuallcobley. The relevant areas of IPR that will be considered is copyright laws, trademarks, patents and reviewing key IP legislation with a view to clarify current laws and to ensure the balance of public and private rights. In April 2009, The Office of the United States Trade Representatives declared in its 301 Special Report 2009 that Malaysia was to remain on the Watch List due to concerns in enforcement of IPR. It urged Malaysia to continue its efforts to update its IPR laws and to accede and fully implement WIPO Internet Treaties. As MyIPO has always maintained the importance of IP protection in an increasingly aware and knowledge-driven society, the following amendments to IP laws will be included shortly.

The Intellectual Property Corporation of Malaysia will grant special permission to the Education Ministry to publish books in Braille if the publisher finds that such an exercise would not be profitable. This amendment is in line with MyIPO’s intention to provide exceptions to copyright infringements for the visually-impaired and physically challenged. The permission could also be extended to giving the publisher rights to produce audio-tapes of books for the blind or orally-impaired. In the event the market is deemed too small for publishers, a license could be issued to the Education Ministry. Undoubtedly, royalty payments would be made to the author to preserve the importance of acknowledging and rewarding the IP proprietor.

Another key area that will undergo some much needed clarification is the passing of IP laws that will protect Internet Service Providers (ISP) through limitation of their liability. Presently, ISPs carrying infringing materials are liable as joint tortfeasors at common law irrespective of whether they were aware if the material was infringing on any existing IPR. The amendment will essentially provide a safety net for the ISP in that they will be given the opportunity to avoid liability if they are informed by the copyright owner that they are carrying infringing materials and they subsequently remove it. ISP liability has proved controversial in other countries such as New Zealand which renders ISPs responsible for enforcing copyright by requiring them to terminate customers’ internet access where there has been repeated copyright infringement.

The Malaysian Copyright Act 1987 provides for a Copyright Tribunal whose function is to grant licenses to produce and publish in the National Language a translation of a literary work written in any other language. MyIPO has recognized the need for utilizing the Tribunal further and has suggested the amendments would involve extending the jurisdiction of the Copyright Tribunal to resemble that of Consumer Claims Tribunal. Implementation of such an amendment would be welcomed by the IP courts and all parties involved as it will prove to be an alternative forum to file claims in a simple, inexpensive and speedy manner.

Amendments will be made to the outdated Trade Marks Act 1976 which is currently based on the United Kingdom Trade Mark Acts of 1983 (which was duly repealed and replaced with the Trade Marks Act 1994 for compliance with EU Directive on trade mark laws). The amendments according to Assoc Prof Rohazar of MyIPO, would include the registration of non-traditional trade marks such as sounds, smells and motion. She also added that MyIPO is looking to cut back red tape in the application procedures. Although the TRIPS agreement made an impact on the Malaysian Trade Marks Act such as the introduction of protection of well-known marks and heightened border security measures, the Act is in need of updating and removal of procedural set backs.

The Patents Act 1983 will also be undergoing amendments to include clearer provisions on biotechnology and a depository library for micro-organisms. The result of this amendment is that when a patent is applied for a micro-organism, there will be a provision in the law to deposit a sample of the micro-organism in the national depository. Currently the Patents Act does not provide clear guidelines on this aspect of IPR. According to MyIPO, the review of IP laws in Malaysia will also include the Copyright Act, Industrial Designs Act, Layout Designs of Integrated Circuits Act and Geographical Indications Act.

The Regulating bodies when reviewing current IP laws will be seeking to maintain the balance of public and private interests as it moves to harmonizing the laws to reflect the progress of Malaysian innovation. The current frame work already offers checks and balances such as the avenue of compulsory licensing and parallel imports. Malaysia takes pride in deep rooted traditional knowledge and being party to an Intergovernmental Committee  (IGC) on Traditional Knowledge and Genetic Resources in World Intellectual Property Organisation (WIPO) has assisted in monitoring the availability of such resources for patent purposes. Like our foreign counterparts, Malaysia is also equipped with a digital library for traditional knowledge which acts as a defence against the granting of patents linked to traditional knowledge and genetic resources.

Malaysian IP laws and IPR enforcement is now going under much needed scrutiny and any amendments made will have to maintain the balance of public and private rights that suit the Malaysian people. As foreign trade increases and lobbying continues from powerful countries for various changes to be affected, the task of striking a balance of rights and obligations falls on the MyIPO. It appears the proposed amendments would be welcomed by all as the law serves its purpose best when equipped with clarity and justice.