Training of Trainers Programmeorganised by WIPO, MyIPO, MDeC, 24 February 2011

TEO BONG KWANG Advocate & SolicitorRegistered Trade Mark, Patent and ID AgentManaging Partner,Wong Jin Nee & Teo

Enforcing Intellectual Property Enforcing Intellectual Property Rights in MalaysiaRights in Malaysia

Road Map of the Talk

Why enforcement is important

The overall strategy Criminal enforcement Civil enforcement

Importance of Protecting Importance of Protecting and Enforcing and Enforcing IPRIPRss

Important for various reasons: Maintaining competitive

edge Enhance brand loyalty Protect goodwill over brand Generate more income Maintain & enhance value of

IP

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

Overall Enforcement Approach

Strategic planning and implementation BIG picture & holistic approach Policing Regular and consistent enforcement Internal policy Publicity Engagement

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.

The Pyramid of an Effective Enforcement

Enforcement

EducationEngagement

EEnforcement Stepsnforcement Steps

Identifying instances of infringing activities Evaluating leads Gathering evidence Taking action against offenders

Warning notice Cease and Desist letters Criminal raid Civil action

Two Main Enforcement Routes

Criminal Enforcement Civil Enforcement

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

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

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.

What is a False Trade Description?

Any trade description which is false to a material degree

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.

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

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

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.

CIVIL ACTION

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….

Litigation: Going to WarLitigation: 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

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’).

Pre-emptive remedy: Anton Piller Order

APO: the Nuclear Weapon of civil procedure.

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.

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

Ways to End Litigation Quick

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)

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)

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

Any other issues Questions??

THANK YOU!

Mr. Teo Bong Kwang Tel : +603 20923322

Email : tbk@wjnt-law.com

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