WORLD TRADE
ORGANIZATIONIP/C/W/327/Add.1
18 June 2002
(02-3391)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from Malaysia to questions posed by the European Communities
and their member States, Japan and the United States
Addendum
By means of a communication from the Permanent Mission of Malaysia, dated 6 June 2002,
the Secretariat has received responses to questions posed by the European Communities and theirmember States, Japan and the United States, as circulated in documents IP/C/W/320, 322, 316 and
316/Add.1, respectively.  These responses supplement those circulated in document IP/C/W/327.
_______________
EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
A. G
ENERAL PROVISIONS
1. Please describe if your legislation includes measures necessary to protect public health
and nutrition, and to promote the public interest in sectors of vital importance to your sosio-
economic and technological development as mentioned under Article 8 of the TRIPSAgreement.  If yes, please explain how such measures are consistent with the provisions of the
TRIPS Agreement.
Malaysia 's legislation contains measures necessary to protect public interest in sectors of vital
importance to the technological development of the country as stated in Article 8 of the TRIPS
Agreement.
The Patents Act 1983 provides for compulsory licence of a patent in compliance with
Article 31 of the TRIPS Agreement.  The provisions of the law are provided for under sections 49,
49(1), 50, 51, 52, 53, 54 and section 84 on Rights of Government.
Any person aggrieved by any decision or order of the Registrar of the Patent Board may
appeal to the High Court.  However, to date Malaysia has not invoked compulsory licence to any
patent holder.
B. COPYRIGHT AND RELATED RIGHTS
2. Please state how your legislation provides for the protection of the exclusive rights of
authors in relation to their literary and artist ic works, as specified in Article 9 of TRIPS
Agreement which requires Members to comply with  Articles 1-21 of the Berne Convention and
the Appendix to the B erne Convention (1971).IP/C/W/327/Add.1
Page 2
Section 13 of the Copyright Act 1983 provides that:
(1) Copyright in a literary, musical or artistic work, a film, a sound recording or a derivative work
shall be the exclusive right to control in Malaysia -
(a) the reproduction in any material form provided that, without prejudice to paragraph
(e), the exclusive right to control the distribution of copies refer only to the act of
putting into circulation copies not previously put into circulation in Malaysia and not
to any subsequent distribution of those copies or any subsequent importation of those
copies into Malaysia;
(aa) the communication to the public;
(b) the performance, showing or playing to the public;
(e) the distribution of copies to the public by sale or other transfer of ownership;  and
(f) the commercial rental to the public;
of the whole work or a substantial part thereof, either in its original or derivative form.
(2) Notwithstanding subsection (1), the right of control under that subsection does not include the
right to control -
(a) the doing of any of the acts referred to in subsection (1) by way of fair dealing for
purposes of non-profit research, private study, criticism, review or the reporting of
current events, subject to the condition that  if such use is public, it is accompanied by
an acknowledgement of the title of the work and its authorship, except where the
work is in connection with the doing of any of such acts for the purposes of non-
profit research, private study and the reporting of current events by means of a soundrecording, film or broadcast;
(b) the doing of any of the acts referred to in subsection (1) by way of parody, pastiche or
caricature;
(c) the inclusion in a film or broadcast of any artistic work situated in a place where it
can be viewed by the public;
(d) the reproduction and distribution of copies of any artistic work permanently situated
in a place where it can be viewed by the public;
(e) the incidental inclusion of a work in an artistic work, sound recording, film or
broadcast;
(f) the inclusion of a work in a broadcast, performance, showing or playing to the public,
collection of literary or musical works, sound recording or film, if such inclusion is
made by way of illustration for teaching purposes and is compatible with fairpractice:
Provided that mention is made of the source and of the name of the author which
appears on the work used;IP/C/W/327/Add.1
Page 3
(ff) any use of a work for the purpose of an examination by way of setting the questions,
communicating the questions to the candidates or answering the questions:
Provided that a reprographic copy of a musical work shall not be made for use by an
examination candidate in performing the work;
(g) the recording made in schools, universities or educational institutions of a work
included in a broadcast intended for such schools, universities or educational
institutions;
(gg) the making of a sound recording of a broadcast, or a literary, dramatic or musical
work, sound recording or a film included in the broadcast insofar as it consists of
sounds if such sound recording of a broadcast is for the private and domestic use ofthe person by whom the sound recording is made;
(ggg) the making of a film of a broadcast, or a literary, artistic, dramatic or musical work or
a film included in the broadcast insofar as it consists of visual images if such making
of a film of the broadcast is for the private and domestic use of the person by whomthe film is made;
(gggg) the making of copies of television broadcasts which are subtitled or otherwise
modified for people who are deaf or hard  of hearing, or physically or mentally
handicapped in other ways and the issuing of such copies to the public by non-profitmaking bodies or institutions which the Minister may, by order, prescribe;
(h) the reading or recitation in public or in a broadcast by one person of any reasonable
extract from a published literary work if accompanied by sufficient
acknowledgement;
(i) any use made of a work by or under the direction or control of the Government, by
the National Archives or  any State Archives, by the National Library, or any State
library, or by such public libraries and educational, scientific or professional
institutions as the Minister may by order prescribe, where such use is in the public
interest and is compatible with fair practice and the provisions of any regulations,
and:
(i) no profit is derived there from;  and
(ii) no admission fee is charged for the performance, showing or playing, if any,
to the public of the work thus used;
(j) the reproduction of any work by or under the direction or control of a broadcasting
service wholly-owned by the Government where such reproduction or any copies
thereof are intended exclusively for a lawful broadcasting and are destroyed beforethe end of the period of six calendar months  immediately following the making of the
reproduction or such longer period as may be agreed between the broadcasting
service and the owner of the relevant part of the copyright in the work:
Provided any reproduction of a work made under this paragraph may, if it is of
exceptional documentary character, be preserved in the archives of the broadcastingservice which are hereby designated official archives for the purpose, but subject to
this Act, shall not be used for broadcasting or for any other purpose without the
consent of the owner of the relevant part of the copyright in the work;IP/C/W/327/Add.1
Page 4
(k) the performance, showing or playing of a work by a non-profit making club or
institution where such performance, showing or playing is for charitable or
educational purposes and is in a place where no admission fee is charged in respect of
such performance, showing or playing;
(l) any use of a work for the purpose of any judicial proceedings, the proceedings of a
royal commission, a legislative body, a statutor y or Governmental inquiry, or of any
report of any such proceedings, or for the purpose of the giving of professional advice
by a legal practitioner;
(m) the making of quotations from a published work if they are compatible with fair
practice and their extent does not exceed that justified by the purpose, including
quotations from newspaper articles and periodicals in the form of press summaries:
Provided that mention is made of source and of the name of the author which appears
on the work thus used;
(n) the reproduction by the press, the broadcasting or the showing to the public of articles
published in newspapers or periodicals on current topics, if such reproduction,broadcasting or showing has not been expressly reserved:
Provided that the source is clearly indicated;
(o) the reproduction by the press, the broadcasting or the performance, showing or
playing to the public of lectures, addresses and other works of the same nature whichare delivered in public if such use is for informatory purposes and has not been
expressly reserved;  and
(p) the commercial rental of computer programs, where the program is not the essential
object of the rental.
(3) For the purposes of subsection (2)(l), "a legislative body" means the Parliament of Malaysia
or, in relation to a State, the authority having pow er under the Constitution of that State to make laws
for the State, as the case may be.
3. Please describe the protection accorded to authors of computer programs, databases or
compilations of data.
Section 7 of the Copyright Act 1983 provides that:
(1) Subject to this section, the followin g works shall be eligible for copyright:
(a) literary works;
(b) musical works;
(c) artistic works;
(d) films;
(e) sound recordings;  andIP/C/W/327/Add.1
Page 5
(f) broadcasts.
(2) Works shall be protected irrespective of their quality and the purpose for which they
were created.
(2A) Copyright protection shall not extend to any idea, procedure, method of operation or
mathematical concept as such.
(3) A literary, musical or artistic work shall not be eligible for copyright unless -
(a) sufficient effort has been expended to make the work original in character;  and
(b) the work has been written down, recorded or otherwise reduced to material form.
"literary work" includes:
(a) novels, stories, books, pamphlets, manuscripts, poetical works and other writings;
(b) plays, dramas, stage directions, film scenarios, broadcasting scripts, choreographic
works and pantomimes;
(c) treatises, histories, biographies, essays and articles;(d) encyclopaedias, dictionaries and other works of reference;
(e) letters, reports and memoranda;
(f) lectures, addresses, sermons and other works of the same nature;
(g) tables or compilations, whether or not expressed in words, figures or symbols and
whether or nor in a visible form;  and
(h) computer programs,
but does not include official texts of the Government or statutory bodies of a legislative or regulatory
nature, or judicial decisions.
4. Please state whether your legislation provides for a rental right and, if so, the works to
which it applies.
Section 13(f) of the Copyright Act 1987 provides rental rights for computer programs and
cinematographic works.
5. Please describe the rights granted to performers, producers of phonograms (sound
recordings) and broadcasting organisations under your legislation.
(i) Rights granted to performers are described under Sections 16A, 16B and 25A of the
Copyright Act 1987;
(ii) Exclusive rights granted to producers of phonograms (sound recordings) and
broadcasting organizations.IP/C/W/327/Add.1
Page 6
6. Please state whether your legislation provides for any limitation or exception in relation
to each of the rights described above in acco rdance with the relevant provisions of the Berne
and Rome Conventions and in light of Article 13 and 14(6) of the TRIPS Agreement.
Malaysia 's legislation provides for limitation or exception in relation to each of the rights
described, under Sections 13(2) and 16(3) of the Copyright Act 1987.
7. Please state the terms of protection of ea ch right described above and the work or
subject matter to which it applies.
The Copyright Act 1987 provides that:
Section  17.  Duration of copyright in literary, musical or artistic works.
(1) Except as otherwise provided in this Act, c opyright in any literary, musical or artistic work
which subsists in such work under this Act shall subsist during the life of the author and fifty years
and shall continue to subsists until the expiry of a period of fifty years after his death.
(2) Where a literary, musical or artistic work had not been published before the death of the
author, copyright which subsists in such work under this Act shall continue to subsist until the expiry
of a period of fifty years computed from the beginning of the calendar year next following the year in
which the work was first published.
(3) Where a literary, musical or artistic work is published anonymously or under a pseudonym,
copyright which subsists in such work under this Act shall continue to subsist until the expiry of a
period of fifty years computed from the beginning of the calendar year next following the year in
which the work was first published or first made available to the public or made, whichever is the
latest:
provided that in the event of the identity of th e author becoming known, the duration of copyright
shall be calculated in accordance with subsection (1).
(4) In this section, a reference to "author" shall,  in the case of a work of joint authorship, be
construed as a reference to the author who dies last.
Section  18.  Duration of copyright in published editions.
Copyright which subsists in a published edition under this Act shall continue to subsists until
the expiry of a period of fifty years computed from the beginning of the calendar year next following
the year in which the edition was first published.
Section  19.  Duration of copyright in sound recordings.
Copyright which subsists in a sound recording under this Act shall continue to subsists until
the expiry of a period of fifty years computed from the beginning  of the calendar year next following
the year in which the recording was first published or, if the sound recording has not been published,from the beginning of the calendar year following the year of fixation.
Section  20.  Duration of copyright in broadcasts.
Copyright which subsists in a broadcast under this Act shall continue to subsist until the
expiry of a period of fifty years computed from the beginning of the calendar year next following the
year in which the broadcast was first made.IP/C/W/327/Add.1
Page 7
Section  22.  Duration of copyright in films.
Copyright which subsists in a film under this Act shall continue to subsist until the expiry of a
period of fifty years computed from the beginning of the calendar year next following the year in
which the film was first published or first made available to the public or made, whichever is thelatest.
Section  23.  Duration of copyright in works of Government, Government organizations and
international bodies.
Copyright which subsists in works of the Government, Government organizations and
international bodies under this Act shall continue to subsist until the expiry of a period of fifty yearscomputed from the beginning of the calendar year next following the year in which the work was first
published.
Section  23A.  Duration of performers' Rights.
Rights in a live performance which subsists under this Act shall continue to subsist until the
expiry of a period of fifty years computed from the beginning of the calendar year next following the
year in which the live performance was given.
Section  23B.  Duration of an equitable remuneration.
The right to equitable remuneration shall subsist from the time the sound recording is
published until the expiry of a period of fifty years computed from the beginning of the calendar year
next following the year of publication or, if the sound recording has not been published, from the time
of fixation of the sound recording until the expiry of a period of fifty years computed from thebeginning of the calendar year next following the year of the fixation.
8. Please state how your legislation grants the retroactive protection provided pursuant to
Article 18 of the Berne Convention (the obligation of which derives from Article 9 of the TRIPS
Agreement) and Article 14(6) of the TRIPS Agreement.
Section 2 of the Copyright Act 1987 provides the retroactive protection on the extension of
protection derives from Article 9 and 14(b) of TRIPS.
9. Please explain whether the droit de suite  provided for in Article 14 ter of the Berne
Convention is protected in your legislation.
Section 13 of the Copyright Act 1987 provides the principle of droit de suite  as in
Article 14 ter of the Berne Convention.
C. TRADEMARKS
10. Please give the definition of a sign under your national legislation and explain under
what conditions it is protectable.
(i) Our current legislation does not mention signs.  However, Section 3(1) of the Trade
Marks Act 1976, states trade mark, means a mark used or proposed to be used in relation to
goods or services for the purpose of indicating or so as to indicate a connection in the course
of trade between the goods or services and a person having the right either as proprietor or as
registered user to use the mark whether with or without an indication of the identity of thatIP/C/W/327/Add.1
Page 8
person.  A"mark" includes a device, brand, heading,  label, ticket name, signature, word, letter,
numeral or any combination thereof.
(ii) A mark is protectable whether with or without registration in Malaysia under Trade
Marks Act 1976 or by the Principle of Common Law and Equity.
11. Please confirm whether or not services are a protectable subject matter in your
trademark law.  Please confirm if signs, such as trade names, are protectable.  Please describe if
elements such as sound, perfumes and containers are protectable.
Our Trade Marks Act 1976, provides protection for service marks, trade names and three
dimensional marks but not sound and perfumes.
12. Please explain what the requirements of use a re, if any, as a condition for a trademark
registration.  Please explain the definition of use and the conditions of maintenance of a
registration in that respect.
Section 3(1) of the Trade Marks Act 1976 defines registration of a trade mark of which a
mark used or proposed to be used is capable of being registered.  However, if a mark is not registeredit will still be protected under the principle of comm on law and equity by showing "use".  Registration
of a trade mark, however can be removed from the register if an aggrieved party can show that the
mark has not been used for a continuous period of three years.
13. Please confirm whether or not your legislation permits that the registration of
trademarks be indefinitely renewable.
Section 41 of the Trade Marks Act 1976 prescribes conditions of renewal of a trade mark for
a period of ten years from the date of expiration of the original registration or of the last renewal of
registration.  This date shall hereinafter be referred to as the date of expiration of the last registration.
14. Please describe the special requirements, if any, prescribed by your legislation
concerning the use of a trademark.
Please refer to the answer to the question No. 11.
D. G
EOGRAPHICAL INDICATIONS
15. Please explain whether or not your trademark registration authority refuses a
trademark application if it contains a geographical indication.
The Trade Marks Act 1976, Section 14(1):
A mark or part of a mark shall not be registered as a trade mark:
(f) if it contains or consists of a geographical indication with respect to goods not
originating in the territory indicated, if use of the indication in the mark for suchgoods in Malaysia is of such a nature as to mislead the public as to the true place of
origin of the goods;  or
(g) if it is a mark for wines which contains or consists of a geographical indication
identifying wines, or is a mark for spirits which contains or consists of a geographicalindication identifying spirits, not originating in the place indicated by the
geographical indication in question.IP/C/W/327/Add.1
Page 9
(2) Article 6bis of the Paris Convention and Article 16 of the TRIPS Agreement shall apply for
the purpose of determining whether a trade mark is a well-known trade mark.
14A.  Where registration shall not be refused.
(1) A trade mark shall not be refused registration by virtue of paragraphs (f) and (g) of section 14
if the application for its registration had been made in good faith, or if it had been used continuously
in good faith in the course of trade by the applicant for its registration or his predecessor in title,
either:
(a) before the commencement of the Geographical Indications Act 2000;  or(b) before the geographical indication in question is protected in its country of origin.
(2) A trade mark shall not be refused registration by virtue of paragraphs (f) and (g) of section 14
if the geographical indication in question -
(a) has ceased to be protected;  or(b) has fallen into disuse,
in its country of origin.
16. Please give the definition of a geographical indication in your legislation.
Section 2(1) of the Geographical Indications  Act 2000 defines "Geographical Indication"
means an indication which identifies any goods as originating in a country or territory, or a region orlocality in that country or territory, where a given quality, reputation or other characteristic of the
goods is essentially attributable to their geographical origin.
17. Please describe and explain the provisions of your legislation establishing a link, if any,
between the characteristics of an indication and its geographical origin.
A link established between the characteristics (of quality, reputation or other features) of an
indication will have to be essentially attributable from their geographical origin.
18. Please describe how additional protection is granted by your legislation to wines and
spirits.  Please mention other types of products, if any, covered by this additional protection.
(i) Section 5(1) of the Geographical Indications Act 2000 provides that any interested
person may institute proceedings in the court to prevent, in respect of geographicalindications:
any use in the course of trade of a geographical in dication identifying wines for wines not originating
in the place indicated by the geographical indication in question or a geographical indication
identifying spirits for spirits not originating in the place indicated by the geographical indication in
question, even where the true origin of the wines or spirits is indicated or the geographical indication
is used in translation or accompanied by expressions such as "kind", "type", "style" or "imitation".
(ii) Normal protection is given to all other products, however additional protection is only
given to wines and spirits as required under Article 23 of TRIPS.IP/C/W/327/Add.1
Page 10
19. Please explain how exceptions under Article 24 TRIPS are used in your jurisdiction.
Please provide examples of the use of the excepti ons by courts or lists of names considered as
generic in your jurisdiction.
There has not been any conflict that could lead to jurisdiction.
E. INDUSTRIAL DESIGNS
20. Please explain whether or not your legislat ion extends to the protection of designs
dictated essentially by technical or functional considerations.  Please explain how textile designs
are protected.
The Industrial Designs Act 1996 does not grant protection to industrial designs essentially
dictated by technical or junctional characteristics of an article.  On textile design, the law does provide
protection like any other designs.  Section 3 of the Industrial Designs Act 1996 describes industrialdesign as features of shape, configuration, pattern or ornament applied to an article by any industrial
process or means, being features which in the finished article appeal to and are judged by the eye, but
does not include:
(a) a method or principle of construction;  or(b) features of shape or configuration of an article which:
(i) are dictated solely by the function which the article has to perform;  or
(ii) are dependent upon the appearance of another article of which the article is
intended by the author of the design to form an integral part.
21. Please explain how your legislation protects right holders of a design against importing
of articles bearing embodied or copied design.
Section 33(1) of the Industrial Designs Act 1996 provides that the owner of a registered
industrial design shall have the right to institute legal proceedings against any person who hasinfringed or is infringing any of the rights conferred by the registration of the industrial design and
importing of articles bearing embodied or copied design is an act of infringement under
Section 32(2)(b) of the Act.
22. Please state whether or not your legislation provides for the right to issue a compulsory
licence for industrial designs.
The Industrial Designs Act 1996 does not provide for the right to issue a compulsory licence
for industrial designs.
23. Please indicate for what period of time your legislation grants protection for industrial
designs.
Section 25 of the Industrial Designs Act 1996 provides;
(1) The registration of an industrial design shall be deemed to have come into force on the filing
date of the application for the registration of the industrial design and shall subsist for five years
thereafter.IP/C/W/327/Add.1
Page 11
(2) The period of registration of an industrial design may be extended for two further consecutive
terms of five years each, if an application for extension is made in the prescribed form, and the
prescribed extension fee is paid before the expiration of the current term.
(3) A period of grace of six months from the date on which any unpaid extension fee was due
shall be granted for the payment of such extension fee, subject to the payment of such surcharge as
may be prescribed.
(4) Where an application for extension is not made or an extension fee is not paid in accordance
with this section, the registration shall lapse, and a notice of lapse of the registration shall be
published in the Gazette.
F. PATENTS
24. Please describe how your legislation defines the notions of:  novelty, inventiveness and
industrial application.
Sections 14, 15 and 16 of the Patents Act 1983 describes the notion of novelty, inventiveness
and industrial application as explained below:
Section 14.  Novelty
(1) An invention is new if it is not anticipated by prior art.
(2) Prior art shall consist of -
(a) everything disclosed to the public, anywhere in the world, by written publication, by
oral disclosure, by use or in any other way, prior to the priority date of the patent
application claiming the invention;
(b) the contents of a domestic patent application having an earlier priority date than the
patent application referred to in paragraph (a) to the extent that such contents are
included in the patent granted on the basis of the said domestic patent application.
(3) A disclosure made under paragraph (a) of subsection (2) shall be disregarded -
(a) if such disclosure occurred within one year preceding the date of the patent
application and is such disclosure was by reason or in consequence of acts committedby the applicant or his predecessor in title;
(b) if such disclosure occurred within one year preceding the date of the patent
application and if such disclosure was by reason or in consequence of any abuse of
the rights of the applicant or his predecessor in title;
(c) if such disclosure is by way of a pending application to register the patent in the
United Kingdom Patent Office as at the date of coming into force of this Act.
(4) The provisions of subsection (2) shall not exclude the patentability of any substance
or composition, comprised in the prior art, for use in a method referred to in
paragraph (d) of subsection (1) of section 13, if its use in any such method is not
comprised in the prior art.IP/C/W/327/Add.1
Page 12
Section 15.  Inventive step
An invention shall be considered as involving an inventive step if, having regard to any
matter which forms part of the prior art under paragraph (a) of subsection (2) of section 14, such
inventive step would not have been obvious to a person having ordinary skill in the art.
Section 16.  Industrial application
An invention shall be considered industrially applicable if it can be made or used in any kind
of industry.
25. Please explain whether or not in your legislat ion, patent or otherwise, paten rights are
enjoyed without any exclusions.  If exclusions a re provided for, please describe in detail how
these exclusions are applied in legal as well as practical terms.
Section 36 of the Patent Act 1983 explains the Rights of Owner of patent:
(1) Subject and without prejudice to the other provisions of this Part, the owner of a patent shall
have the following exclusive rights in relation to the patent:
(a) to exploit the patented invention;
(b) to assign or transmit the patent;
(c) to conclude licence contracts.
(2) No person shall do any of the acts referred to in subsection (1) without the consent of the
owner of the patent.
(3) For the purpose of this Part, "exploitation" of a patented invention means any of the following
acts in relation to a patent:
(a) when the patent has been granted in respect of a product:
(i) making, importing, offering for sale, selling or using the products;
(ii) stocking such product for the purpose of offering for sale, selling or using;
(b) when the patent has been granted in respect of a process:
(i) using the process;
(ii) doing any of the acts referred to in paragraph (a), in respect of a product
obtained directly by means of the process.
(4) For the purposes of this section, if the patent has been granted in respect of a process for
obtaining a product, the same product produced by a pe rson other than the owner of the patent or his
licensee shall, unless the contrary is proved, be taken in any proceedings to have been obtained by that
process.
The exclusion to the patent rights are prescribed under section 37 and 38.IP/C/W/327/Add.1
Page 13
Section  37.  Limitation of rights
(1) The rights under the patent shall extend only to acts done for industrial or commercial
purposes and in particular not to acts done only for scientific research.
(2) The rights under the patent shall not extend to acts in respect of products which have been put
on the market:
(i) by the owner of the patent;(ii) by a person having the right referred to in section 38;
(iii) by a person having the right referred to in section 43;
(iv) by the beneficiary of a compulsory licence within the meaning of section 48.
(3) The rights under the patent shall not extend to the use of the patented invention on any foreign
vessel, aircraft, spacecraft or land vehicle temporarily in Malaysia.
(4) The rights under the patent shall be limited in duration as provided for in section 35.(5) The rights under the patent shall be limited by the provisions of section 35A, by the
provisions on compulsory licences as provided in sections 51 and 52 and by the provisions on the
rights of Government or any person authorised by the Government as provided in section 84.
Section 38.  Rights derived from prior manufacture or use
(1) Where a person at the priority date of the patent application -
(a) was in good faith in Malaysia making the product or using the process which is the
subject of the invention claimed in the application;
(b) had in good faith in Malaysia made serious preparations towards the making of the
product or using the process referred to in paragraph (a),
he shall have the right, despite the grant of the patent, to exploit the patented invention.
Provided that the product in question is made, or the process in question is used, by the said
person in Malaysia.
Provided further that he can prove, if the invention was disclosed under the circumstances
referred to in paragraphs (a), (b) or (c) of subsection (3) of section 14 that his knowledge of theinvention was not a result of such disclosure.
(2) The right referred to in subsection (1) shall not be assigned or transmitted except as part of the
business of the person concerned.
26. Please explain whether your legislation prov ides for the exclusion of inventions from
patentability based on ordre public  or morality.  If so, please explain the relevant section of your
legislation and explain its formulation.  Please also explain if it has been applied in practice.
Section 31(1) of the Patents Act 1983 provides for the exclusion of inventions from
patentability  based on public order.  To date it has not been applied in practice.IP/C/W/327/Add.1
Page 14
27. Please explain whether or not diagnostic, th erapeutic and surgical methods are excluded
from patentability in your legislation.  If so, please explain the relevant section of your
legislation and explain its formulation.
Section 13(1) (d) of the Patents Act 1983 provides that methods for the treatment of human or
animal body by surgery or therapy, and diagnos tic methods practised on the human or animal body
are non-patentable inventions and shall be excluded from patent protection.
28. Please explain whether or not plants, animals and essentially biological processes
are excluded from patentability in your legislation.  If so, please explain the relevant section of
your legislation and explain its formulation.
Plants, animals and essentially biological processes are excluded from patentability as
described under section 13(1) (b) of the Patents Act 1983.
29. Please describe how micro-organisms, non-essentially biological processes,
microbiological processes and plant varieties are prot ected in your legislation.  Please explain, in
this respect, the relevant sections of your legislation.
By virtue of section 13(1) (b), man-made micr o-organism, micro-biological processes and the
products of micro-organism processes are not included under the non-patentable inventions.
Therefore, these inventions are protectable under the Patent System.  As for Plant Varieties, the
protection would be the sui generis system.
30. Please explain how your legislation protects patent rightholders against the importing
and against the offering for sale of a patented invention.
Section 58 of the Patents Act 1983 describes, an act is deemed to be infringement when a
patent is exploited (importing, offering for sale, selling or using the product) not by the owner or the
exploitation of patent is without the consent of the owner.
Section 59 provides,
(1) the owner of the patent shall have the right to institute court proceedings against any person
who has infringed or is infringing the patent.
(2) the owner of the patent shall have the same right against any person who has performed acts
which make it likely that an infringement will occur.
(3) the proceedings in subsection (1) and (2) may not be instituted after five years from the act of
infringement.
31. Please state if your legislation provides for patent product protection of pharmaceutical
and agricultural chemical products.  In the a ffirmative, please indicate the legal reference.
The Patent Act 1983 provides for patent product protection of pharmaceutical and agricultural
chemical products as long as the invention is new,  involves an invention step and is industrially
applicable as stated under sections 11 and 12.
32. Please clarify if the patent protection of a process, as provided for in your legislation,
covers the product obtained directly by that process.IP/C/W/327/Add.1
Page 15
Patent protection of a process covers the product obtained directly by that process.  This is as
provided for under the rights of an owner of patent in section 36(3) (b) of the Patents Act 1983.
33. Please explain the additional conditions, if any, in your legislation other than the
sufficient disclosure of the invention in Article 29 of the TRIPS Agreement (e.g. submission of
justification for access to genetic material or prio r inform consent to its use).  If such additional
conditions exist, please point out the relevant le gislation and describe the additional conditions
in detail.
There are no additional conditions at present for such further disclosure of the inventions in
Article 29 TRIPS covering access to genetic material or prior inform consent to its use.
34. Please describe if your legislation provides for limited exceptions to the exclusive rights
conferred by a patent.  If affirmative, please make a reference to relevant legislation.
Section 37 of the Patents Act 1983 described the limitation as below:
(1) The rights under the patent shall extend only to acts done for industrial or commercial
purposes and in particular not to acts done only for scientific research.
(2) The rights under the patent shall not extend to acts in respect of products which have been put
on the market -
(i) by the owner of the patent;(ii) by a person having the right referred to in section 38;(iii) by a person having the right referred to in section 43;
(iv) by the beneficiary of a compulsory licence within the meaning of section 48.
(3) The rights under the patent shall not extend to the use of the patented  invention on any
foreign vessel, aircraft, spacecraft or land vehicle temporarily in Malaysia.
(4) The rights under the patent shall be limited in duration as provided for in section 35.
(5) The rights under the patent shall be limited by the provisions of section 35A, by the
provisions on compulsory licences as provided in sections 51 and 52 and by the provisions on the
rights of Government or any person authorised by the Government as provided in section 84.
35. Please explain whether or not your legislation provides for compulsory licensing.  If so,
please explain in detail the conditions under which a compulsory licence may be granted.  In
particular, please explain how your national le gislation considers individual merits in the
authorization of such use.
Sections 49 and 49A of the Patents Act 1983 provides for compulsory licensing and
conditions under which a compulsory licence may be granted.  Section 84 provides for "Rights ofGovernment".
Individual merits in the authorization of such use is stated under section 50, and under
section 51 as to how the Board decides in considering the grant of a compulsory licence.  Section 52
provides the scope of compulsory licence.  The limitation of compulsory licence is provided undersection 53.IP/C/W/327/Add.1
Page 16
36. Please explain how your legislation explicitly ensures that a proposed user has made
efforts to obtain authorization from the righ tholder on reasonable commercial terms and
conditions and that such efforts have not been successful within a reasonable period of time.  In
this context, how do you define "reasonable period of time".  Please also explain how yourlegislation ensures that the use of a compulsory  licence shall be author ized predominantly for
the supply to the domestic market of the Member authorizing such use.
Section 49(2) provides that a compulsory licence shall not be applied for unless the person
making the application has made efforts to obtain authorisation from the owner of the patent  on
reasonable commercial terms and conditions but such efforts have not been successful within a
reasonable period of time.
Under "Rights of Government", Section 84(3 ), states the exploitation of the patented
invention shall be limited to the purpose for which it was authorised and shall be subject to the
payment to the owner of the patent of an adequa te remuneration for such exploitation, taking into
account:-
(a) the economic value of the Minister 's authorisation as determined in the decision;  and
(b) where a decision has been taken under paragraph (b) of subsection (1), the need to
correct anti competitive practices.
Section 84(4) provides that the Minister shall make his decision under subsection (3) after
hearing the owner of the patent and any other in terested person if they wish to be heard.
Section 53(1) provides limitation of compulsory licence which states:A compulsory licence granted by the Board:
(a) shall not be assigned otherwise than in connection with the goodwill or business or
that part of the goodwill or business in which the patented invention is used;
(b) shall be limited to the supply of the patented invention predominantly in Malaysia.
(2) The beneficiary of the compulsory licence shall not conclude licence contracts with third
person under the patent in respect of which the compulsory licence was granted.
To date Malaysia has not granted any compulsory licence.
37. Please state if your legislation grants additi onal protection for innovations after the 20
years of patent protection has lapsed.
Our legislation does not grant additional protection for innovation after the 20 years of patent
protection has lapsed.
38. Please explain how your legislation provides for the reversal of the burden of proof in
relation to process patents.
Such provision does not exist in the Patents Act 1983.  However, provision for the reversal of
the burden of proof is being provided for generally under Order 24, 25, 26, 38 and 39 of the Rules ofHigh Court 1980.IP/C/W/327/Add.1
Page 17
G. LAYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
39. Please describe how your legislation protects topographies.
Topographies are protected under the Layout Designs of Integrated Circuits Act 2000.
Section 5 provides that,
(1) A layout design shall be eligible for protection under this Act if the layout design is an
original layout design and the right holder of the la yout design was, at the time the layout design was
created, a qualifying person.
(2) For the purposes of subsection (1), a layout design shall be original if -
(a) it is the result of its creator's own intellectual effort and is not commonplace among
creators of layout designs and manufacturers of integrated circuits at the time of its
creation;  or
(b) in relation to a layout design that consists of a combination of elements and
interconnections that are commonplace, the combination, taken as a whole, is the
result of its creator's own intellectual effort and is not commonplace among creatorsof layout designs and manufacturers of integrated circuits at the time of its creation.
(3) This Act protects all independently created layout designs referred to in subsection (1) even if
they are identical and, subject to section 8, regardless of when they were created.
(4) A layout design shall be deemed not to have been created until it has been fixed in a material
form or incorporated into an integrated circuit, whichever is earlier.
40. Please explain what protection your national legislation grants to right holders against
the unlawful importation, sale or distribution for commercial purposes of topographies
including integrated circuits or other articles in which a topography is incorporated inaccordance with Article 36 of the TRIPS Agreement.
The scope of protection is provided for under section 9 of the Layout Designs of Integrated
Circuits, that is to say,
The right holder of a protected layout design shall have the following rights:
(a) the right to reproduce, and to authorize the reproduction of, all or a substantial part of
his protected layout design, whether by incorporation into an integrated circuit orotherwise;  and
(b) the right to commercially exploit, and to authorize the commercial exploitation of, his
protected layout design, and integrated circuit in which the protected layout design is
incorporated or an article that contains an integrated circuit in which the protected
layout design is incorporated.
Whereas,
"commercially exploit" includes -(a) to sell, let for hire or otherwise distribute by way of trade;IP/C/W/327/Add.1
Page 18
(b) to offer or expose for sale or hire or other distribution by way of trade;  and
(c) to import for the purpose of sale, letting for hire or other distribution by way of trade.
Section 10 provides that,
Subject to the provisions of this Act, it shall be  an infringement of a right holder's right in a
protected layout design for any person to do or cause any other person to do any of the acts referred to
in section 9 without the consent of the right holder.
41. Please explain how your legislation provide s for the derogation from Article 36 as
specified in Article 37 of the TRIPS Agreement where a person has no knowledge or reasonable
grounds to know when acquiring an integrated circuit or an article incorporating such an
integrated circuit that it contains an unlawful topography.
Section 12 of the Act provides that,
(1) The rights of a right holder in a protected layout design are not infringed by a person who
commercially exploits, or authorizes the commercial exploitation of:
(a) a copy of the protected layout design;
(b) an unauthorized integrated circuits, being an integrated circuit in which the protected
layout design is incorporated;  or
(c) an article that contains an unauthorized integrated circuit referred to in paragraph (b),
if, at the time when the person acquired the copy, integrated circuit or article, the person did not
know, and could not reasonably be expected to have known, that the copy was unauthorized, that the
integrated circuit was unauthorized or that the article contained an unauthorized integrated circuit, as
the case may be.
(2) If a person referred to in subsection (1) becomes aware or could reasonably be expected to
have become aware that the copy was unauthorized, that the integrated circuit was unauthorized or
that the article contains an unauthorized integrated circuit, as the case may be,  subsection (1) shall
cease to apply to any subsequent commercial exploitation of the copy, integrated circuit or article
unless the person pays to the right holder such remuneration -
(a) as may be agreed upon between the person and the right holder;
(b) as may be determined by a method agreed upon between the person and the right
holder;  or
(c) in default of agreement, as may be determ ined by the High Court on the application
of either the person or the right holder.
(3) If the remuneration referred to in subsection (2) is to be determined by the High Court as
provided under paragraph (2)  (c), the remuneration payable shall be an adequate remuneration in thecircumstances of the case, taking into account such royalties as would be reasonably payable under a
freely negotiated licence in respect of such a protected layout design.IP/C/W/327/Add.1
Page 19
42. Please state the term of protection granted by your legislation to topographies.
The term of protection is provided for under section 8 of the Act,
(1) A layout design shall be protected under this Act for a period of ten years from the date the
layout design is first commercially exploited in Malaysia or elsewhere.
(2) Notwithstanding subsection (1), the protection granted to a layout design under this Act shall
lapse fifteen years after the date the layout design is created.
H. PROTECTION OF UNDISCLOSED INFORMATION
43. Please explain whether or not your legislatio n grants a defined period of time for the
protection of undisclosed information.  If so, please give the time span.
The protection of undisclosed information has no defined period of time so long it remains as
an undisclosed information.
44. Please explain how your legislation defines "undisclosed information".
Generally, the protection of undisclosed information in Malaysia is laid down under the rule
of common law and equity.  Any natural person or legal entity may not disclose trade secrets in his or
its possession in a manner that is contrary to honest  practice in trade.  A commercial or industrial
activity shall be considered secret if, due to its nature, it is not known, it draws its commercial value
from its confidentiality, reasonable measure have been taken to maintain its confidentiality, or it is not
easily accessible to an ordinary person having skill in the art.
The Official Secrets Act 1972 prevents from any disclosure of information made by the
public servant or any unauthorised person.
45. Please explain how your legislation de fines data submitted to governments or
governmental agencies.
Generally, data or any information submitted to government or governmental agencies is
protected under the ambit of the rule of common law of breach of confidence.
Under the law of breach of confidence, submission of data of the above mentioned kind
would normally be protected against disclosure to third parties.  In other words, the Drug Control
Authority (DCA) could be prevented from disclosing an earlier applicant's data to a later applicant.
Hence, even in the absence of any specific law on data exclusivity, our common law relating to the
protection of confidential information would appear to be sufficient to protect test data from
unauthorised disclosure to third parties.  The regulatory authority could not be prevented from using
the earlier applicant's data to assist it in evaluating and considering the latter applicant's application
for regulatory approval.
I. ENFORCEMENT
46. Please describe how your legislation provides for effective action against infringement of
intellectual property rights.
The laws of Malaysia provide for civil and criminal action against infringement of intellectual
property rights to wit;IP/C/W/327/Add.1
Page 20
(i) Civil action under;
(a) Copyright Act 1987
Section  36.  Infringements
(1) Copyright is infringed by any person who does, or caused any other person to do, without the
licence of the owner of the copyright, an act the doing of which is controlled by copyright under this
Act.
(2) Copyright is infringed by any person who, without  the consent or licence of the owner of the
copyright, imports an article into Malaysia for the purpose of -
(a) selling, letting for hire, or by way of trade, offering or exposing for sale or hire, the
article;
(b) distributing the article -
(i) for the purpose of trade;  or
(ii) for any other purpose to an extent that it will affect prejudicially the owner of
the copyright;  or
(c) by way of trade, exhibiting the article in public,
where he knows or ought reasonably to know that the making of the article was carried out without
the consent or licence of the owner of the copyright.
(3) Copyright is infringed by any person who circumvents or causes any other person to
circumvent any effective technological measures that are used by authors in connection with the
exercise of their rights under this Act and that restrict acts, in respect of their works, which are not
authorized by the authors concerned or permitted by law.
(4) Copyright is infringed by any person who k nowingly performs any of the following acts
knowing or having reasonable grounds to know that  it will induce, enable, facilitate or conceal an
infringement of any right under this Act:
(a) the removal or alteration of any electronic rights management information without
authority;
(b) the distribution, importation for distribution or communication to the public, without
authority, of works or copies of works knowing that electronic rights management
information has been removed or altered without authority.
(5) For the purpose of subsection (4) and section 41, "rights management information" means
information which identifies the works, the author of the work, the owner of any right in the work, or
information about the terms and conditions of use of the work, any numbers or codes that represent
such information, when any of these items of information is attached to a copy of a work or appears in
connection with the communication of a work to the public.IP/C/W/327/Add.1
Page 21
Section  37.  Action by owner of copyright and relief
(1) Subject to this Act, infringements of copyright shall be action-able at the suit of the owner of
the copyright and in any action for such an infringement, all such relief by way of damages,
injunction, accounts or otherwise, shall be available to the plaintiff as are available in anycorresponding proceedings in respect of infringement of other proprietary rights.
(2) Where in an action under this section, an infringement of copyright is proved or admitted, and
the court, having regards, in addition to all other material considerations to -
(a) the flagrancy of the infringement;  and
(b) any benefit shown to have accrued to the defendant by reason of the infringement,
is satisfied that effective relief would not otherwise be available to the plaintiff, the court in assessing
damages for the infringement, shall have power to award such additional damages by virtue of this
subsection as the court may consider appropriate in the circumstances.
(3) No injunction shall be issued in proceedings for infringement of copyright which requires a
completed or partly built building to be demolished or which prevents the completion of a partly built
building.
(4) For the purposes of this section and section 38 -
(a) "action" includes a counter-claim, and reference to the plaintiff and to the defendant
in an action shall be construed accordingly;  and
(b) "court" means the appropriate High Court in Malaysia.
(5) For the purposes of this section, owner of th e copyright means the first owner or an assignee,
as the case may be, of the relevant part of the copyright.
Section  38.  Proceedings in case of copyright subject to exclusive licence
(1) This section shall have effect as to proceed ings in the case of any copyright in respect of
which an exclusive licence has been granted and is in force at the time of the events to which the
proceedings relate.
(2) Subject to this section, the exclusive licensee shall (except against the owner of the copyright)
have the same rights of action, and be entitled to the same remedies, under section 37 as if the licence
had been an assignment, and those rights and remedies shall be concurrent with the rights and
remedies of the owner of the copyright under that section.
(3) Where an action is brought either by the owner of the copyright or by the exclusive licensee,
and the action, in so far as it is brought under section 37, relates (wholly or partly) to an infringement
in respect of which they have concurrent rights of action under that section, the owner or licensee, as
the case may be, shall not be entitled, except with the leave of the court, to proceed with the action, in
so far as it is brought under that section and relates to that infringement, unless the other party iseither joined as a plaintiff in the action or added as a defendant; but this subsection shall not affect the
granting of an interlocutory injunction on the application of either of them.
(4) In any action brought by the exclusive licensee by virtue of this section, any defence which
would have been available to a defendant in the action, if this section had not been enacted and theIP/C/W/327/Add.1
Page 22
action have been brought by the owner of the copyrigh t, shall be available to that defendant as against
the exclusive licensee.
(5) Where an action is brought in the circumstances mentioned in subsection (3) and the owner of
the copyright and the exclusive licensee are not plaintiffs in the action, the court, in assessingdamages in respect of any infringement as is mentioned in that subsection -
(a) if the plaintiff is the exclusive licensee, shall take into account any liabilities (in
respect of royalties or otherwise) to which the licence is subject;  and
(b) whether the plaintiff is the owner of the copyright or the exclusive licensee, shall take
into account any pecuniary remedy awarded to the other party under section 37 in
respect of that infringement, or, as the case may require, any right of actionexercisable to the other party under that section in respect thereof.
(6) Where an action, in so far as it is brought under section 37, relates (wholly or partly) to an
infringement in respect of which the owner of the copyright and the exclusive licensee have
concurrent rights of action under that section, and in that section (whether they are both parties to it or
not) an account of profits is directed to be taken in  respect of that infringement, then subject to any
agreement of which the court is aware whereby the application of those profits is determined as
between the owner of the copyright and the exclus ive licensee, the court shall apportion the profits
between them as the court may consider just and shall give such directions as the court may consider
appropriate for giving effect to the appointment.
(7) In an action brought either by the owner of the copyright or by the exclusive licensee -
(a) no judgement or order for the payment of damages in respect of an infringement of
copyright shall be given or made under section 37, if a final judgement or order has
been given or made awarding an account of profits to the other party under thatsection in respect of the same infringement;  and
(b) no judgement or order for an account of profit in respect of an infringement of
copyright shall be given or made under that section, if a final judgement or order has
been given or made awarding either damages or an account of profits to the other
party under that section in respect of the same infringement.
(8) Where, in an action brought in the circumstances mentioned in subsection (3), whether by the
owner of the copyright or by the exclusive licensee, the other party is not joined as a plaintiff (eitherat the commencement of the action or subsequently) but is added as a defendant, he shall not be liable
for any costs in the action unless he enters an appearance and takes part in the proceedings.
(9) For the purposes of this section, the expression:
"exclusive licence" means a licence signed by or on behalf of an owner or a prospective
owner of copyright authorizing the licensee to the ex clusion of all other persons, to exercise a right
which by virtue of this Act would (apart from th e licence) be exercisable exclusively by the owner of
the copyright;  and "exclusive licensee" shall be construed accordingly;
"if the licence had been an assignment" means if, instead of the licence, there had been
granted (subject to terms and conditions corresponding as nearly as may be with those subject to
which the licence was granted)  an assignment of the copyright in respect of its or their application to
the doing, at the place and time authorized by  the licence, of the acts so authorized;IP/C/W/327/Add.1
Page 23
"the other party", in relation to the owner of th e copyright, means the exclusive licensee, and
in relation to the exclusive licensee, means the owner of the copyright.
(b) Patents Act 1983
Section  58.  Acts deemed to be infringement
Subject to subsections (1), (2) and (3) of section 37 and section 38, an infringement of a
patent shall consist of the performance of any act referred to in subsection (3) of section 36 in
Malaysia by a person other than the owner of the patent and without the agreement of the latter in
relation to a product or a process falling within the scope of protection of the patent.
Section  59.  Infringement proceedings
(1) The owner of the patent shall have the right to institute Court proceedings against any person
who has infringed or is infringing the patent.
(2) The owner of the patent shall have the same  right against any person who has performed acts
which make it likely that an infringement will occur, which in this Part is referred to as an "imminent
infringement".
(3) The proceedings in subsections (1) and (2) may not be instituted after five years from the act
of infringement.
Section  60.  Injunction and award of damages
(1) If the owner of the patent proves that an infringement has been committed or is being
committed, the Court shall award damages and sh all grant an injunction to prevent further
infringement and any other legal remedy.
(2) If the owner of the patent proves imminent infringement the Court shall grant an injunction to
prevent infringement and any other legal remedy.
(3) The defendant in any proceedings referred to in this section may request in the same
proceedings the invalidation of the patent, in which case the provisions of subsections (2) and (3) of
section 56 shall apply.
Section  61.  Infringement proceedings by licensee and beneficiary of compulsory licence
(1) For the purpose of this section, "beneficiary" means -
(a) any licensee unless the licence contract provides that the provisions of this
subsection do not apply or provides different provisions;
(b) the beneficiary of a compulsory licence granted under section 51.
(2) Any beneficiary may request the owner of the patent to institute Court proceedings for any
infringement indicated by the beneficiary, who shall specify the relief desired.
(3) The beneficiary may, if he proves that the owner of the patent received the request but refuses
or fails to institute the proceedings within three months from the receipt of the request, institute theproceedings in his own name, after notifying the ow ner of the patent of his intention but the owner
shall have the right to join in the proceedings.IP/C/W/327/Add.1
Page 24
(4) notwithstanding that the three-month period referred to in subsection (3) has not been
satisfied, the Court shall, on the request of the beneficiary, grant an appropriate injunction to prevent
infringement or to prohibit its continuation, if the beneficiary proves that immediate action is
necessary to avoid substantial damage.
(c) Trade Marks Act 1976
Section  38.  Infringement of a trademark
(1) A registered trade mark is infringed by a person who, not being the registered proprietor of
the trade mark or registered user of the trade mark using by way of permitted use, uses a mark which
is identical with it or so nearly resembling it as is likely to deceive or cause confusion in the course oftrade in relation to goods or services in respect of which the trade mark is registered in such manner as
to render the use of the mark likely to be taken either -
(a) as being use as a trade mark;
(b) in a case in which the use is use upon the goods or in physical relation thereto or in an
advertising circular, or other advertisement, issued to the public, as importing a
reference to a person having the right either as registered proprietor or as registered
user to use the trade mark or to goods with which the person is connected in the
course of trade;  or
(c) in a case in which the use is use at or near the place where the services are available
or performed or in an advertising circular or other advertisement issued to the public,
as importing a reference to a person having a right either as registered proprietor or as
registered user to use the trade mark or to services with provision of which the person
is connected in the course of trade.
Section  39.  Infringement of trade mark by  breach of certain restriction
(1) Where, by notice upon goods or upon the container of goods, the registered proprietor or a
registered user of a trade mark registered in the Register makes a statement prohibiting the doing of an
act to which this section applies, a person who, be ing the owner for the time being of the goods, does
that act, or authorises it to be done, in relation to th e goods in the course of trade or with a view to a
dealing with the goods in the course of trade, sh all be deemed to infringe the trade mark unless -
(a) at the time when he agreed to buy the goods he acted in good faith without notice that
the statement appeared on the goods;  or
(b) he became the owner of the goods by virtue of a title derived from another person
who had agreed to buy the goods.
(2) The acts to which this section applies are:
(a) the application of the trade mark upon goods after they have suffered alteration to
their state, conditions, get up or packing;
(b) in a case in which the trade mark is upon the goods the alteration, partial removal or
partial obliteration of the trade mark, the application of some other trade mark to thegoods or the addition to the goods of other matter in writing or otherwise that is likely
to injure the reputation of the trade mark;  andIP/C/W/327/Add.1
Page 25
(c) in the case in which the trade mark is upon the goods and there is also other matter
upon the goods indicating a connection in the course of trade between the registered
proprietor or registered user and the goods, the removal or obliteration, whether
wholly or partially, of the trade mark unless that other matter is wholly removed or
obliterated.
(3) In this section references in relation to goods to the registered proprietor, to a registered user,
and to the registration of a trade mark shall be construed, respectively, as references to the registered
proprietor of the trade mark, to a registered user of  the trade mark and to the registration of the trade
mark in respect of those goods and the expression "upon" includes, in relation to goods, a reference to
physical relation to the goods.
(d) Industrial Designs Act 1996
Section  32.  Infringement of registered industrial design
(1) Subject to the provisions of this Act, the owner of a registered industrial design shall have the
exclusive right to make or import for sale or hire, or for use for the purposes of any trade or business,or to sell, hire or to offer or expose for sale or hire, any article to which the registered industrial
design has been applied.
(2) Subject to section 30, a person infringes the rights conferred by the registration of an
industrial design if he, without the licence or cons ent of the owner of the industrial design, does any
of the following things while the registration is still in force -
(a) applies the industrial design or any fraudulent or obvious imitation of it to any article
in respect of which the industrial design is registered;
(b) imports into Malaysia for sale, or for use for the purposes of any trade or business,
any article to which the industrial design or any fraudulent or obvious imitation of it
has been applied outside Malaysia without the licence or consent of the owner;  or
(c) sells, or offers or keeps for sale, or hires, or offers or keeps for hire, any of the articles
described in paragraph (a) and (b).
(3) Notwithstanding subsection (1), the right of the owner of a registered industrial design shall
not extend to acts in respect of an article to which the registered industrial design is applied by or with
the consent of the owner after the article has been lawfully imported into or sold in Malaysia.
Section  33.  Infringement proceedings
(1) The owner of a registered industrial design shall have the right to institute legal proceedings
against any person who has infringed or is infringing any of the rights conferred by the registration ofthe industrial design.
(2) The owner of a registered industrial design shall have the same right against any person who
has performed acts which make it likely that an infringement will occur.
(3) The proceedings mentioned in subsections (1) and (2) may not be instituted after five years
from the act of infringement.
(4) For the purposes of this section, "owner of a registered industrial design" means the registered
owner and includes an assignee, a licensee or th e beneficiary of a compulsory licence granted underIP/C/W/327/Add.1
Page 26
section 27; but if any proceedings are instituted by a person other than the registered owner, it must be
proved that that person had made a prior request to the registered owner to institute proceedings for
the infringement complained of by him and that the registered owner had refused or failed to institute
the proceedings within three months from the receipt of the request, without prejudice however to the
registered owner's right to join in such proceedings.
Section  35.  Remedies for infringement
(1) If the owner of a registered industrial design proves that an infringement has been committed
or is being committed, the Court may award damages or an account of profits and may grant an
injunction to prevent further infringement and any other legal remedies.
(2) If the owner of a registered industrial design proves that acts are being performed which make
it likely that an infringement will occur, that Co urt may grant an injunction to prevent infringement
and any other legal remedies.
(3) The Court may refuse to award damages, or to make an order for an account of profits, in
respect of an infringement, if the defendant satisfies the Court -
(a) that, at the time of the infringement, he was not aware that the industrial design was
registered;  and
(b) that he had, prior to that time, taken all reasonable steps to ascertain whether the
industrial design had been registered.
(e) Layout Designs of Integrated Circuits Act 2000
Section  10
It shall be an infringement of a right holder's right in a protected layout-design for any person
to do or cause any other person to do any of the acts referred to in section 9 (rights of right holder)
without the consent of the right holder.
Section 13.  Actions for infringement
(1) Subject to this Act, a right holder may bring an action for an infringement of his rights in a
protected layout-design.
(2) Subject to this act, the relief that the High Court may grant in an action under subsection (1)
includes an injunction and the High Court may impose such terms on the grant of the injunction as the
High Court considers fit.
(3) In addition to the injunction granted under subs ection (2), the High Court may, subject to this
Act, make an order for damages or an account of profits or such other relief as the High Court
considers fit.
(4) If, in an action for an infringement of rights in a protected layout-design, it is established that
an infringement was committed but that at the time of the infringement the defendant was not aware
or had no reasonable grounds for suspecting that the act constituting the infringement was an
infringement, the plaintiff shall not be entitled to any damages against the defendant in respect of the
infringement but shall be entitled to an account of profits in respect of the infringement, whether any
other relief is granted or not.IP/C/W/327/Add.1
Page 27
(5) In any action in which damages may be awarded, the High Court may, having regard to all of
the circumstances of the case including the flagrancy of the infringement and any benefit shown to
have accrued to the defendant by reason of the infringement, award additional damages.
(ii) Criminal Action;
(a) Copyright Act 1987
Section  41.  Offences
(1) Any person who during the subsistence of copyright in a work or performers' right -
(a) makes for sale or hire any infringing copy;
(b) sells, lets for hire or by way of trade, exposes or offers for sale or hire any infringing
copy;
(c) distributes infringing copies;
(d) possesses, otherwise than for his private and domestic use, any infringing copy;
(e) by way of trade, exhibits in public any infringing copy;
(f) imports into Malaysia, otherwise than for his private and domestic use, an infringing
copy;
(g) makes or has in his possession any contrivance used or intended to be used for the
purposes of making infringing copies;
(h) circumvents or causes the circumvention of any effective technological measures
referred to in subsection (3) of section 36;
(i) removes or alters any electronic rights management information without authority;  or
(j) distributes, imports for distribution or communicates to the public, without authority,
works or copies of works in respect of which electronic rights managementinformation has been removed or altered without authority,
shall, unless he is able to prove that he had acted in good faith and had no reasonable grounds for
supposing that copyright or performers would or might thereby be infringed, be guilty of an offence
and shall on conviction be liable:
(i) in the case of an offence under paragraphs (a) to (f), to a fine not exceeding
then thousand ringgit for each infringing copy, or to imprisonment for a termnot exceeding five years or to both and for any subsequent offence, to a fine
not exceeding twenty thousand ringgit for each infringing copy or to
imprisonment for a term not exceeding ten years or to both;
(ii) in the case of an offence under paragraph (g), to a fine not exceeding twenty
thousand ringgit for each contrivance in respect of which the offence wascommitted or to imprisonment for a term not exceeding ten years or to both
and for any subsequent offence to a fine not exceeding forty thousand ringgitIP/C/W/327/Add.1
Page 28
for each contrivance in respect of which the offence was committed or to
imprisonment for a term not exceeding twenty years or to both;
(iii) in the case of an offence under paragraphs (h), (i) and (j), to a fine not
exceeding two hundred and fifty thousand ringgit or to imprisonment for a
term not exceeding three years or to both and for any subsequent offence, to afine not exceeding five hundred thousand ringgit or to imprisonment for a
term not exceeding five years or to both.
(2) For the purposes of paragraphs (a) to (f) of subsection (1), any person who has in his
possession, custody or control three or more infringing copies of a work or recording in the same form
shall, unless the contrary is proved, be presumed to be in possession of or to import such copies
otherwise than for private or domestic use.
(3) Any person who causes a literary or musical work to be performed in public shall be guilty of
an offence under this subsection unless he is able to prove that he had acted in good faith and had no
reasonable grounds for supposing that copyright would or might thereby by infringed.
(4) Where an offence under this section is committed by a body corporate or by a person who is a
partner in a firm, every director, secretary or manager of the body corporate or, as the case may be,
every other partner in the firm shall be deemed to be guilty of the offence unless he proves that the
offence was committed without his consent or connivance and that he exercised all due diligence to
prevent the commission of the offence.
(b) Patents Act 1983
Section  64.  Unauthorised claim or patent
(1) Any person who falsely represents that anything disposed of by him for value is a patented
product or process commits an offence and, subject to  the following provisions of this section, is
liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not
exceeding two years or to both.
(2) For the purposes of subsection (1), a person who for value disposes of an article having
stamped, engraved or impressed on it or otherwise applied to it the word "patent" or "patented" or
anything expressing or implying that the article is a patented product, shall be taken to represent thatthe article is a patented product.
(3) Subsection (1) does not apply where the representation is made in respect of a product after
the patent for that product or, as the case may be, the process in question has, expired or been
invalidated and before the end of a period which is reasonably sufficient to enable that person to takesteps to ensure that the representation is not made or does not continue to be made.
(4) In proceedings for an offence under this section, it shall be a defence for any person to prove
that he used due diligence to prevent the commission of the offence.
Section  65.  Unauthorised claim that patent has been applied for
(1) Any person who represents that a patent has been applied for in respect of any article
disposed of for value by him and -
(a) no such application has been made, orIP/C/W/327/Add.1
Page 29
(b) any such application has been refused or withdrawn,
commits an offence and, subject to the following provis ions of this section, is liable on conviction to a
fine not exceeding fifteen thousand ringgit or to im prisonment for a term not exceeding two year or to
both.
(2) Paragraph (b) of subsection (1) does not apply where the representation is made or continues
to be made before the expiry of a period which co mmences with the refusal or withdrawal and which
is reasonably sufficient to enable that person to take steps to ensure that the representation is not made
or does not continue to be made.
(3) For the purposes of subsection (1), a person who for value disposes of an article having
stamped, engraved or impressed on it or otherwise applied to it the words "patent pending", oranything expressing or implying that a patent has been applied for in respect of the article, shall be
taken to represent that a patent has been applied for in respect of the article.
(4) In any proceedings for an offence under this section, it shall be a defence for any person to
prove that he used due diligence to prevent the commission of the offence.
Section  67.  Offences by corporation
(1) Where an offence under this Act which has been committed by a body corporate is proved to
have been committed with the consent or connivance of, or to be attributable to any neglect on thepart of a director, manager, secretary or other similar officer of the body corporate, or any person who
was purporting to act in any such capacity, he, as well as the body corporate, commits that offence
and is liable to be prosecuted against and punished accordingly as provided by the Act.
(2) Where the affairs of a body corporate are managed by its members, subsection (1) shall apply
in relation to the acts and defaults of a member in connection with his functions of management as if
he was a director of a body corporate.
(c)  Industrial Designs Act 1996
Section 37.  False representation of registration
(1) Any person who falsely represents that anything disposed of by him for value is an article
protected by an industrial design registration commits an offence and shall be liable on conviction to a
fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or
to both.
(2) For the purposes of subsection (1), a person who for value disposes of any article having
stamped, engraved or impressed thereon or otherwise applied thereto the words "registered industrial
design" or any other word or words expressing or implying that the article is one to which a registered
industrial design has been applied, shall be taken to represent that the article is one protected by an
industrial design registration.
(3) Subsection (1) does not apply where the representation is made in respect of an industrial
design after the registration in respect of that industrial design has expired or been revoked and before
the end of a period which is reasonably sufficient to en able that person to take steps to ensure that the
representation is not made or does not continue to be made.
(4) In proceedings for an offence under this section, it shall be a defence for any person to prove
that he used due diligence to prevent the commission of the offence.IP/C/W/327/Add.1
Page 30
(5) This section shall have effect in relation to a right to apply for the registration of an industrial
design as they have effect in relation to a registered industrial design, and references to a registered
industrial design shall include references to a right to apply for the registration of an industrial design.
Section  39.  Offences by body corporate
(1) Where an offence under this Act committed by a body corporate is proved to have been
committed with the consent or connivance of, or to be attributable to any neglect on the part of a
director, manager, secretary or other similar offi cer of the body corporate, or any person who was
purporting to act in any such capacity, he, as well as the body corporate, shall be guilty of that offence
and shall be liable to be prosecuted against and punished accordingly as provided by this Act.
(2) Where the affairs of a body corporate are managed by its members, subsection (1) shall apply
in relation to the acts and defaults of a member in connection with his functions of management as if
he were a director of the body corporate.
(d) Trade Marks Act 1976
Section  81.  Falsely representing a trade mark as registered
(1) A person who makes a representation:
(a) with respect to a mark, not being a registered trade mark, to the effect that it is a
registered trade mark;
(b) with respect to a part of a registered trade mark, not being a part separately registered
on a trade mark, to the effect that it is so registered;
(c) to the effect that a registered trade mark is registered in respect of goods or services
in respect of which it is not registered;  or
(d) to the effect that the registration of a trade mark gives a right to the exclusive use of
the trade mark in circumstances in which, having regard to conditions or limitations
entered on the Register, the registration does not give that right,
is guilty of an offence and is liable, on conviction, to a fine not exceeding five hundred ringgit or to a
term of imprisonment not exceeding two months or to both.
(2) For the purpose of this section, the use in Malaysia in relation to a trade mark of the word
"registered" or of any other word referring whether expressly or impliedly to registration shall be
deemed to import a reference to registration in the Register except -
(a) where the word is used in physical association with other words delineated in
characters at least as large as those in which that word is delineated and indicating
that the reference is to registration as a trade mark under the law of a country outside
Malaysia being a country under the law of which the registration referred to is in fact
in force;
(b) where the word (being a word other than the word "registered") is of itself such as to
indicate that the reference is to registration as mentioned in paragraph (a);  orIP/C/W/327/Add.1
Page 31
(c) where that word is used in relation to a mark registered as a trade mark under the law
of a country outside Malaysia and in relation to goods or services to be exported to
that country.
Criminal procedures and penalties are also pr ovided under the Trade Descriptions Act 1972
where trade marks, patents, industrial designs, geographical indications goods are used as tradedescriptions.  It is a criminal offence under the Trade Descriptions Act 1972 where false trade
descriptions are used on goods in the course of trade or business.
47. Please explain whether or not your legislation provides for a mechanism to appeal to
judicial bodies of final administrative decisions.
In Malaysia, aggrieved persons can appeal to the High Court on the Registrar's decisions,
when an appeal case comes to the High Court the normal appeal process will be followed to thehighest court of the country.
48. Please describe how your legislation authorizes judges to order production of evidence
by the opposing party.  Please give precise information on what measures are taken to ensure
the protection of confidential information.
In pursuance to Order 24, Rules of the High Court 1980, a party may petition the Court for
ordering its opponent to produce any documents within its opponent's control which is pertinent to the
case that is, procedures for discovery and inspection of documents within the control of all the parties
involved in the proceedings.
49. Please quote provisions of your legislation that authorize judges to order a defendant to
desist from an infringement.
The Court may grant relief for right holders by way of injunctions as provided for under the
various intellectual property legislations.  The general procedures to grant such relief are expressed in
section 51(1) of the Specific Relief Act 1950 and paragraph 6 of the schedule to the Courts ofJudicature Act 1950.  In addition, the jurisdiction to grant injunctions is part of the equitable
jurisdiction of the court.
Types of injunctive relief;
An application for an interlocutory injunction may be made by any party to a cause or matter
at any stage of the proceeding.  There are several types of such injunctive relief available to anapplicant (either the plaintiff or the defendant) in a civil suit.  These include restrictive/prohibitive
orders where a party is ordered to refrain from doing something, mandatory orders where a party is
required to perform a positive act or quia timet orders where there is a threatened or continuing wrong
which is calculated to infringe the plaintiff's rights.
Other forms of interim relief;
- Sale of perishable property, Order 29 rule 4 of the Rules of the High Court 1980.
- Order for samples to be taken, Order 29 rule 3 of the Rules of the High Court 1980.- Order for detention, preservation or custody of property, Order 29 rule 2 of the Rules
of the High Court 1980.
- Early trial, Order 29 rule 5 of the Rules of the High Court 1980.IP/C/W/327/Add.1
Page 32
For trademark infringement and passing off cases, the grant of an injunction is governed by
the general provisions mentioned above.  For copyright infringement cases, Section 37(1) of the
Copyright Act 1987 states that relief by way of injunction shall be available to the plaintiff.  This is
also the case in patent infringement cases wherein Section 60(1) of the Patents Act 1983 lays down
that if an infringement is committed, the court shall grant an injunction.  Likewise, Section 35(1) ofthe Industrial Designs Act 1996 echoes the same tenet.
In practice, a plaintiff who has succeeded at trial is granted a permanent injunction as a matter
of course.  In very few cases, final injunctions have been refused, and these are limited to situations
where the scale of infringement is trivial or it is pr obable or certain that the infringing act will not be
repeated by the defendant.
50. Please quote what provisions of your legislation authorize judges to order the payment
to the right holder of adequate damages to compensate the injury he suffered.
The courts have general jurisdiction to awar d damages for infringement of intellectual
property rights.  Damages usually include the recovery of commercial losses associated with the
infringement on flagrancy of infringement shall be taken into account in deciding whether additionaldamages should be awarded.  An award of damages would normally be accompanied by any order for
payment of legal cost incurred by the successful party.  Under such order for costs, the successful
party will normally recover a sum corresponding to the reasonable sums which were expended in the
litigation.
Damages are a matter of right.  A successful plaintiff is entitled to compensation for any harm
caused to him which flows directly and naturally from the tortuous act.  Damages is a legal remedy
which there is no discretion to refuse in IPR cases, unless the case was wholly quia timet in nature.
In trademark infringement and passing off cases, the general principles on damages are relied
upon.
In copyright infringement cases, Section 37(1) of the Copyright Act 1987 makes specific
mention of relief by way of damages or accounts that shall be available to the plaintiff.  Further,
Section 37(2) of the same allows the court to award additional damages for the infringement after
having regard to the circumstances of the case, namely the flagrancy of the infringement and whether
any benefit was shown to have accrued to the defendant by reason of the infringement.  This type ofdamages e.g. exemplary and aggravated damages is thought to be awarded for such matters such an
injury to the author's reputation or feelings, unjust  enrichment, existence of scandalous conduct,
deceit and such which includes deliberate and calculated copyright infringement.
In patent infringement cases, Section 60(1) of  the Patents Act 1983 states that damages shall
be awarded to the patentee if he has proven an infringement has occurred.
Section 35(1) of the Industrial Designs Act 1996 lays down that a court may award damages
or an account of profits.  However, Section 35(3) of the same provides for a situation where the court
may exercise its discretion to refuse to award damages or to make an order for an account of profits.If the defendant satisfies the court that firstly at the time of the infringement he was not aware that the
industrial design was registered and secondly he had prior to that time taken all reasonable steps to
ascertain whether the industrial design had been registered, such an award may be refused.
Although the onus is upon the plaintiff to show what damage has been suffered, it is not
necessary to prove any particular damage in order to succeed.  The court will normally assume that
the defendant's wrongful acts have caused harm and if the quantification of it is difficult, or not
susceptible of mathematical accuracy, a fair or nominal figure for compensation will normally beIP/C/W/327/Add.1
Page 33
awarded.  Some heads of damages which are taken into account when quantifying damages are listed
as below:
- loss of sales and profits,
- damage to goodwill or reputation,
- loss of licensing opportunity, and- stress of competition forcing plaintiff to lower his prices.The plaintiff has an option whether to claim either damages or profits but he cannot have
both.  The principle of an account is that the defendant is treated as having carried on his infringing
activities on behalf of the IPR owner and is theref ore, under a duty to hand over to the IPR owner the
profits made by the infringement.  Generally, an account of profits is an equitable remedy and there is
a discretion to refuse it or to limit it to take into account of such factors such as defendant's innocence,
inequitable conduct by the plaintiff or delay prejudicial to the defendant.
51. Please quote what provisions of your legislation authorize judges to order the payment
of the right holder's expenses by the infringer.
The Courts have jurisdiction under the Rules of the High Court 1980 to order for payment of
legal cost incurred by the successful party.
Essentially, there are two sets of costs in any ci vil action.  The first is "party to party costs" or
costs as between the parties i.e. costs including fees, charges, disbursements, expenses and
remuneration which one party may recover from the other party.  The second is "solicitor and own
client costs" or costs payable to a solicitor by his own client.
The power of the court to award costs is derived from paragraph 15 of the schedule to the
Courts of Judicature Act 1964, and the manner in which it is to exercise this power is set our in Order
59 rule 2(2) of the Rules of the High Court 1980.  The costs of an incident to an IPR action, as the
costs in any other action, are in the discretion of the court which has full power to determine whom
and to what extent such costs should be paid.
The normal order is for costs to follow the ev ent.  Generally, the court follows the ordinary
rule that the unsuccessful party shall pay the costs of the litigation, such costs being taxed upon the
usual scale between party to party.  In a usual case, a party who is awarded costs will still be out of
pocket to the extent that the costs payable to his solicitor exceed the costs he has recovered from his
opponent.  This happens because of the different bases for the assessment of costs which apply as torecovery between the parties (the party and party basis) and recovery by the solicitor from his client
(the solicitor and client basis).
Only in isolated cases have the successful IPR plaintiff been refused relief at trial and have
been ordered to pay the costs of the action e.g. defendant offered undertaking at an early stage of thetrial and the plaintiff refuses the offer, trivial case where action commenced without notice to an
innocent purchaser etc.  There are also a handful of instances where the successful defendant been
refused costs e.g. defendant acted dishonestly.
52. Please explain if and how judges have the au thority to order that infringing goods are
placed outside channels of commerce or destroyed.IP/C/W/327/Add.1
Page 34
The  Courts have general power to order the defendants to deliver up infringing goods or
implements used in their production.
Delivery up of the infringing goods or destruction on oath is ancillary to the grant of an
injunction.  The power of the court to grant this remedy evolved from the equitable principles:  it is
not ordered because the plaintiff has any sort of proprietary right over the items.  Though the normal
form of the order is for actual destruction or delivery up of the infringing articles, it may be modified
in certain cases.  For example, in trademark infringement cases an order for obliteration/erasure of the
infringing mark may be ordered if possible, and in patent infringement cases if the infringing article
can be rendered non-infringing by some alteration or by removal of some part.
An order for delivery up or destruction of materials/implements to produce the infringing
article will not be granted if the  materials/implements are not themselves an infringement but may be
used as part of an infringing apparatus.  For in stance, in literary copyright infringement cases the
printing plates may be the subject matter of such an order but it is very unlikely that the courts would
include the actual printing machine itself as part of the order for destruction.
The defendant is not entitled to any compensation for loss caused to him by such destruction
or delivery up and cannot set off the value of goods delivered up against a claim for damages.
Any other remedies;
The court also has equitable powers to order that the defendant publish corrective statements
and apologies to correct the effect of the infringement.
53. Please quote what provisions of your legislation authorize judges to indemnify a
defendant in the event of abuse by the plaintiff.
The courts have inherent jurisdiction to indemnify a defendant for abuse of the court's
process.  Where the court orders an interlocutory injunction, it will direct the plaintiff to give an
undertaking that if the injunction was wrongly granted against the defendant the plaintiff will pay
damages to the defendant.  The court may under Order 23, Rules of the High Court 1980 also require
security for such undertaking to be given by way of deposit of money into the court's fund or by
providing a guarantee.  This will normally be the case where the plaintiff is a non-resident.
54. Please explain how your legislation implements Article 50 of the TRIPS Agreement.
Malaysia, generally dictates to the common law system and therefore, the courts have
jurisdiction to adjudicate on enforcement of intellectual property rights and can order provisional
measures including the grant of interlocutory injunctions.
The court may also grant relief such as an Anton Pillar Order, Mareva Injunctions and other
forms of relief as the Court finds fit and proper.
An application can also be made to the court for an interim award of damages.  The plaintiff
must show that it is likely that at a full trial a substantial award of damages will be made by the courtand that pending the assessment of the issues at trial there should be an interim order.
55. Please identify the competent authorities in  your jurisdiction who receive requests from
right holders for an application to suspend the release of counterfeit goods by the customs
authorities.IP/C/W/327/Add.1
Page 35
The Trade Marks Act 1976 provides for border measures where the custom is the competent
authority in dealing with restriction on importati on of counterfeit trade mark goods into Malaysia.
The right holder may submit an application to the Re gistrar together with the relevant documents or
information for the custom authority to restri ct importation of counterfeit trade marks goods.
Generally, the Registrar has power to suspend the release of counterfeit goods by the customauthority.  However, when the case goes to the court, it is up to the court to decide.
56. Please indicate whether or not procedures  are available to suspend the exporting of
counterfeits goods.
There is no express provision to suspend the exporting of counterfeit goods in the intellectual
property legislations.  However, the Enforcement Division of the Ministry of Domestic Trade and
Consumer Affairs have the jurisdiction to suspe nd the exportation based on the complaints made by
the right holders.
57. Please indicate whether or not your legislation provides for a de minimis  imports
exception.
There is no express provision of this in the intellectual property legislations, however, the
Customs Act and Regulations does address this principle.
58. Please explain how your legislation implements Article 61 of the TRIPS Agreement.
Criminal Action
(a) Copyright Act 1987
Section 41.  Offences
(1) Any person who during the subsistence of copyright in a work or performers' right -
(a) makes for sale or hire any infringing copy;
(b) sells, lets for hire or by way of trade, exposes or offers for sale or hire any infringing
copy;
(c) distributes infringing copies;
(d) possesses, otherwise than for his private and domestic use, any infringing copy;
(e) by way of trade, exhibits in public any infringing copy;
(f) imports into Malaysia, otherwise than for his private and domestic use, an infringing
copy;
(g) makes or has in his possession any contrivance used or intended to be used for the
purposes of making infringing copies;
(h) circumvents or causes the circumvention of any effective technological measures
referred to in subsection (3) of section 36;
(i) removes or alters any electronic rights management information without authority;  orIP/C/W/327/Add.1
Page 36
(j) distributes, imports for distribution or communicates to the public, without authority,
works or copies of works in respect of which electronic rights management
information has been removed or altered without authority,
shall, unless he is able to prove that he had acted in good faith and had no reasonable grounds for
supposing that copyright or performers would or might thereby be infringed, be guilty of an offenceand shall on conviction be liable -
(i) in the case of an offence under paragraphs (a) to (f), to a fine not exceeding
then thousand ringgit for each infringing copy, or to imprisonment for a term
not exceeding five years or to both and for any subsequent offence, to a fine
not exceeding twenty thousand ringgit for each infringing copy or to
imprisonment for a term not exceeding ten years or to both;
(ii) in the case of an offence under paragraph (g), to a fine not exceeding twenty
thousand ringgit for each contrivance in respect of which the offence was
committed or to imprisonment for a term not exceeding ten years or to both
and for any subsequent offence to a fine not exceeding forty thousand ringgit
for each contrivance in respect of which the offence was committed or toimprisonment for a term not exceeding twenty years or to both;
(iii) in the case of an offence under paragraphs (h), (i) and (j), to a fine not
exceeding two hundred and fifty thousand ringgit or to imprisonment for a
term not exceeding three years or to both and for any subsequent offence, to a
fine not exceeding five hundred thousand ringgit or to imprisonment for aterm not exceeding five years or to both.
(2) For the purposes of paragraphs (a) to (f) of subsection (1), any person who has in his
possession, custody or control three or more infringing copies of a work or recording in the same form
shall, unless the contrary is proved, be presumed to be in possession of or to import such copies
otherwise than for private or domestic use.
(3) Any person who causes a literary or musical work to be performed in public shall be guilty of
an offence under this subsection unless he is able to prove that he had acted in good faith and had no
reasonable grounds for supposing that copyright would or might thereby by infringed.
(4) Where an offence under this section is committed by a body corporate or by a person who is a
partner in a firm, every director, secretary or manager of the body corporate or, as the case may be,every other partner in the firm shall be deemed to be guilty of the offence unless he proves that the
offence was committed without his consent or connivance and that he exercised all due diligence to
prevent the commission of the offence.
Patents Act 1983
Section  64.  Unauthorised claim or patent
(1) Any person who falsely represents that anything disposed of by him for value is a patented
product or process commits an offence and, subject to  the following provisions of this section, is
liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not
exceeding two years or to both.
(2) For the purposes of subsection (1), a person who for value disposes of an article having
stamped, engraved or impressed on it or otherwise applied to it the word "patent" or "patented" orIP/C/W/327/Add.1
Page 37
anything expressing or implying that the artilce is a patented product, shall be taken to represent that
the article is a patented product.
(3) Subsection (1) does not apply where the representation is made in respect of a product after
the patent for that product or, as the case may be, the process in question has, expired or beeninvalidated and before the end of a period which is reasonably sufficient to enable that person to take
steps to ensure that the representation is not made or does not continue to be made.
(4) In proceedings for an offence under this section, it shall be a defence for any person to prove
that he used due diligence to prevent the commission of the offence.
Section  65.  Unauthorised claim that patent has been applied for
(1) Any person who represents that a patent has been applied for in respect of any article
disposed of for value by him and -
(a) no such application has been made, or
(b) any such application has been refused or withdrawn,
commits an offence and, subject to the following provis ions of this section, is liable on conviction to a
fine not exceeding fifteen thousand ringgit or to im prisonment for a term not exceeding two year or to
both.
(2) Paragraph (b) of subsection (1) does not apply where the representation is made or continues
to be made before the expiry of a period which co mmences with the refusal or withdrawal and which
is reasonably sufficient to enable that person to take steps to ensure that the representation is not made
or does not continue to be made.
(3) For the purposes of subsection (1), a person who for value disposes of an article having
stamped, engraved or impressed on it or otherwise applied to it the words "patent pending", or
anything expressing or implying that a patent has been applied for in respect of the article, shall be
taken to represent that a patent has been applied for in respect of the article.
(4) In any proceedings for an offence under this section, it shall be a defence for any person to
prove that he used due diligence to prevent the commission of the offence.
Section  67.  Offences by corporation
(1) Where an offence under this Act which has been committed by a body corporate is proved to
have been committed with the consent or connivance of, or to be attributable to any neglect on thepart of a director, manager, secretary or other similar officer of the body corporate, or any person who
was purporting to act in any such capacity, he, as well as the body corporate, commits that offence
and is liable to be prosecuted against and punished accordingly as provided by the Act.
(2) Where the affairs of a body corporate are managed by its members, subsection (1) shall apply
in relation to the acts and defaults of a member in connection with his functions of management as if
he was a director of a body corporate.IP/C/W/327/Add.1
Page 38
Industrial Designs Act 1996
Section  37.  False representation of registration
(1) Any person who falsely represents that anything disposed of by him for value is an article
protected by an industrial design registration commits an offence and shall be liable on conviction to a
fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or
to both.
(2) For the purposes of subsection (1), a person who for value disposes of any article having
stamped, engraved or impressed thereon or otherwise applied thereto the words "registered industrial
design" or any other word or words expressing or implying that the article is one to which a registeredindustrial design has been applied, shall be taken to represent that the article is one protected by an
industrial design registration.
(3) Subsection (1) does not apply where the representation is made in respect of an industrial
design after the registration in respect of that industrial design has expired or been revoked and beforethe end of a period which is reasonably sufficient to en able that person to take steps to ensure that the
representation is not made or does not continue to be made.
(4) In proceedings for an offence under this section, it shall be a defence for any person to prove
that he used due diligence to prevent the commission of the offence.
(5) This section shall have effect in relation to a right to apply for the registration of an industrial
design as they have effect in relation to a registered industrial design, and references to a registered
industrial design shall include references to a right to apply for the registration of an industrial design.
Section  39.  Offences by body corporate
(1) Where an offence under this Act committed by a body corporate is proved to have been
committed with the consent or connivance of, or to be attributable to any neglect on the part of a
director, manager, secretary or other similar offi cer of the body corporate, or any person who was
purporting to act in any such capacity, he, as well as the body corporate, shall be guilty of that offence
and shall be liable to be prosecuted against and punished accordingly as provided by this Act.
(2) Where the affairs of a body corporate are managed by its members, subsection (1) shall apply
in relation to the acts and defaults of a member in connection with his functions of management as if
he were a director of the body corporate.
Trade Marks Act 1976
Section  81.  Falsely representing a trade mark as registered
(1) A person who makes a representation -
(a) with respect to a mark, not being a registered trade mark, to the effect that it is a
registered trade mark;
(b) with respect to a part of a registered trade mark, not being a part separately registered
on a trade mark, to the effect that it is so registered;
(c) to the effect that a registered trade mark is registered in respect of goods or services
in respect of which it is not registered;  orIP/C/W/327/Add.1
Page 39
(d) to the effect that the registration of a trade mark gives a right to the exclusive use of
the trade mark in circumstances in which, having regard to conditions or limitations
entered on the Register, the registration does not give that right,
is guilty of an offence and is liable, on conviction, to a fine not exceeding five hundred ringgit or to a
term of imprisonment not exceeding two months or to both.
(2) For the purpose of this section, the use in Malaysia in relation to a trade mark of the word
"registered" or of any other word referring whether expressly or impliedly to registration shall be
deemed to import a reference to registration in the Register except -
(a) where the word is used in physical association with other words delineated in
characters at least as large as those in which that word is delineated and indicatingthat the reference is to registration as a trade mark under the law of a country outside
Malaysia being a country under the law of which the registration referred to is in fact
in force;
(b) where the word (being a word other than the word "registered") is of itself such as to
indicate that the reference is to registration as mentioned in paragraph (a);  or
(c) where that word is used in relation to a mark registered as a trade mark under the law
of a country outside Malaysia and in relation to goods or services to be exported to
that country.
Criminal procedures and penalties are also prov ided under the Trade Descriptions Act 1972 where
trade marks, patents, industrial designs, geographical indications goods are used as trade descriptions.It is a criminal offence under the Trade Descriptions Act 1972 where false trade descriptions are used
on goods in the course of trade or business.
JAPAN
A. C
OPYRIGHTS
1. Please explain exceptions or exemptions of  the National Treatment and Most-Favoured-
Nation Treatment under the Copyright and Neighbouring Rights Law, if any, as permitted in
Articles 3 and 4 of the TRIPS Agreement.
Malaysia accords to nationals of other WTO members treatment no less favourable than it
accords to its own nationals with regard to the protection of intellectual property.  Any advantage,favour, privilege or immunity granted by a member to the nationals of any other country is accorded
accordingly to the nationals of other members.
B. T
RADEMARKS
2. Regarding "well-known trademarks", please explain how legislation of your country
implements Article 16.2 and 16.3 of the TRIPS Agreement, which Article 6 bis of the Paris
Convention shall apply, mutatis mutandis , to.  Please cite the relevant provisions of your
country's law.
The proprietor of a trademark which is entitled to protection under the Article 6 bis of Paris
Convention or Article 16 of the TRIPS Agreement as a well-known trademark is entitled to restrainby injunction the use in Malaysia in the course of trade and without the proprietor's consent of theIP/C/W/327/Add.1
Page 40
trademark which, or the essential part of which, is identical with or nearly resembles the proprietor's
mark, in respect of the same goods or services, where the use is likely to deceive or cause confusion.
It is provided under sections 14(d), 14(e) and 70B of the Trade Marks Act 1976.
C. PATENTS
3. Does legislation of your country grant patent protection for inventions relating to
products and processes in all fields of technology?  Are there any exceptions?  If so, please
explain what these exceptions are and how th ey comply with Article 27 of the TRIPS
Agreement.
Malaysia's legislation grants protection for inventions relating to products and processes in all
fields of technology as provided under Sect ion 11 and 12 of the Patents Act 1983.  However,
Section 31 provides that it shall be excluded from patent protection if the invention is contrary topublic order or morality.  The exception to the patentable invention under Section 13 are:-
(a) discoveries, scientific theories and mathematical methods;
(b) plant or animal varieties or essentially biological processes for the production of
plants or animals, other than man-made  living micro-organisms, micro-biological
processes and the products of such micro-organism processes;
(c) schemes, rules or methods for doing business, performing purely mental acts or
playing games;
(d) methods for the treatment of human or animal body by surgery or therapy, and
diagnostic methods practised on the human or animal body.
Malaysia gives protection for man-made living micr o-organism, micro-biolog ical processes and the
products of such micro-organism processes as un der Section 13.  The non-biological processes are
included under general provisions of patentability.  We are currently working on a Draft Law on Plant
Varieties.
4. Does legislation of your country grant a compulsory licenses subject to all the conditions
enumerated in Article 31 of the TRIPS Agreement?  Please cite the relevant provisions of your
country's law.
Yes, our Patents Act 1983 complies with all the conditions enumerated in Article 31 of the
TRIPS Agreement.  The relevant provisions are sections 49 to 54 of the Patents Act which relate to
compulsory licences while Section 84 of the Patents Act provides for rights of the Government.
D. P
ROTECTION OF UNDISCLOSED INFORMATION
5. Please explain how legislation of your country provides for the protection of the
"Undisclosed Information" as required by Arti cles 39.1 and 39.2 of the TRIPS Agreement.
Please explain in detail and please cite the relevant provisions of your country's law.
Generally, the protection of undisclosed information in Malaysia is laid down under the rule
of common law and equity.  Any natural person or legal entity may not disclose trade secrets in his or
its possession in a manner that is contrary to honest  practice in trade.  A commercial or industrial
activity shall be considered secret if, due to its nature, it is not known, it draws its commercial value
from its confidentiality, reasonable measure have been taken to maintain its  confidentiality, or it is
not easily accessible to an ordinary person having skill in the art.  Disclosure shall include making useIP/C/W/327/Add.1
Page 41
of information, tests or other secret information presented to the competent authorities in order to
obtain a marketing authorisation necessary for pharmaceuticals and agricultural products containing
new chemical material provided that a tangible effort was furnished to obtain such products.
The Official Secrets Act 1972 prevents from any disclosure of information made by a public
servant or any unauthorised person.
6. If your legislation ensures that undisclosed test or other data submitted by an applicant
to the responsible State agency in the procedur e for market authorisation of a pharmaceutical
or an agricultural chemical product is protected against disclosure and against unfair
commercial use by a competitor, for example by prohibiting a second applicant for a similar
product from relying on original data of the first applicant, when applying subsequently formarket authorisation for a similar product, please explain it in detail.  Does legislation of your
country provide for exceptions to this?  Does legislation of your country set a specific term of
protection by the responsible State agency for undisclosed test or other data of the first
applicant?  If yes, please explain such specific term in detail, citing the relevant provisions of
law.
Generally, the protection of undisclosed information in Malaysia is laid down under the rule
of common law and equity.  Any natural person or legal entity may not disclose trade secrets in his or
its possession in a manner that is contrary to honest  practice in trade.  A commercial or industrial
activity shall be considered secret if, due to its nature, it is not known, it draws its commercial value
from its confidentiality, reasonable measure have been taken to maintain its  confidentiality, or it isnot easily accessible to an ordinary person having skill in the art.  Disclosure shall include making use
of information, tests or other secret information presented to the competent authorities in order to
obtain a marketing authorisation necessary for pharmaceuticals and agricultural products containing
new chemical material provided that a tangible effort was furnished to obtain such products.
The Official Secrets Act 1972 prevents from any disclosure of information made by a public
servant or any unauthorised person.
E. E
NFORCEMENT
7. Please indicate the remedies which the judicial authorities order regarding each
intellectual property rights provided in the TRIPS Agreement, including injunctions, damages,
expenses, destruction or disposal of infringing goods, materials or implements for theirproduction.  Please explain the criteria and the way of calculation to decide the amount of the
damages which judicial authorities order to  the infringer to pay the right holder.
(a) injunctions
The general jurisdiction to grant injunctions is expressed in Chapter IX of the Specific Relief
Act 1950 and paragraph 6 of the schedule to the Courts of Judicature Act 1964.  In addition, the
jurisdiction to grant injunctions is part of the equitable jurisdiction of the court.  For trademark
infringement and passing off cases, the grant of an injunction is governed by the general provisions
mentioned above.  For copyright infringement cas es, Section 37(1) of the Copyright Act 1987 states
that relief by way of injunction shall be available to the plaintiff.  This is also the case in patentinfringement cases wherein Section 60(1) of the Patents Act 1983 lays down that if an infringement is
committed, the court shall grant an injunction.  Likewise, Section 35(1) of Industrial Designs Act
1996 echoes the same tenet.
In practice, a plaintiff who has succeeded at trial is granted a permanent injunction as a matter
of course.  In very few cases final injunctions have been refused, and these are limited to situationsIP/C/W/327/Add.1
Page 42
where the scale of infringement is trivial or it is probable or certain that the infringing act will not be
repeated by the defendant.
(b) damages, including recovery of profits, and expenses, including attorney's fees
(i) Damages
Damages are a matter of right.  A successful plaintiff is entitled to compensation for any harm
caused to him which flows directly and naturally from the tortuous act.  Damages is a legal remedy
which there is no discretion to refuse in IPR cases, unless the case was wholly quia timet in nature.
In trademark infringement and passing off cases, the general principles on damages are relied
upon.
In copyright infringement cases, Section 37(1) of the Copyright Act 1987 makes specific
mention of relief by way of damages or accounts that shall be available to the plaintiff.  Further,
Section 37(2) of the same allows the court to award additional damages for the infringement afterhaving regard to the circumstances of the case, namely the flagrancy of the infringement and whether
any benefit was shown to have accrued to the defendant by reason of the infringement.  This type of
damages i.e. exemplary and aggravated damages is thought to be awarded for such matters such an
injury to the author's reputation or feelings, unjust enrichment, existence of scandalous conduct, deceit
and such which includes deliberate and calculated copyright infringement.
In patent infringement cases, Section 60(1) of  the Patents Act 1983 states that damages shall
be awarded to the patentee if he has proven an infringement has occurred.
Section 35(1) of the Industrial Designs Act 1996 lays down that a court may award damages
or an account of profits.  However, Section 35(3) of the same provides for a situation where the court
may exercise its discretion to refuse to award damages or to make an order for an account of profits.
If the defendant satisfies the court that firstly at the time of the infringement he was not aware that the
industrial design was registered and secondly he had prior to that time taken all reasonable steps to
ascertain whether the industrial design had been registered, such an award may be refused.
Although the onus is upon the plaintiff to show what damage has been suffered, it is not
necessary to prove any particular damage in order to succeed.  The court will normally assume that
the defendant's wrongful acts have caused harm and if the quantification of it is difficult, or not
susceptible of mathematical accuracy, a fair or nominal figure for compensation will normally be
awarded.  Some heads of damages which are taken into account when quantifying damages are listed
as below:-
- loss of sales and profits,- damage to goodwill or reputation,
- loss of licensing opportunity, and
- stress of competition forcing plaintiff to lower his prices.
(ii) Account of profits
The plaintiff has an option whether to claim either damages or profits but he cannot have
both.  The principle of an account is that the defendant is treated as having carried on his infringing
activities on behalf of the IPR owner and is theref ore under a duty to hand over to the IPR owner theIP/C/W/327/Add.1
Page 43
profits made by the infringement.  Generally, an account of profits is an equitable remedy and there is
a discretion to refuse it or to limit it to take into account of such factors such as defendant's innocence,
inequitable conduct by the plaintiff or delay prejudicial to the defendant.
(iii) Costs
Essentially, there are two sets of costs in any ci vil action.  The first is "party to party costs" or
costs as between the parties i.e. costs including fees, charges, disbursements, expenses and
remuneration which one party may recover from the other party.  The second is "solicitor and own
client costs" or costs payable to a solicitor by his own client.
The power of the court to award costs is derived from paragraph 15 of the schedule to the
Courts of Judicature Act 1964, and the manner in which it is to exercise this power is set out in Order
59 rule 2(2) of the Rules of the High Court 1980.  The costs of an incident to an IPR action, as the
costs in any other action, are in the discretion of the court which has full power to determine whom
and to what extent such costs should be paid.
The normal order is for costs to follow the ev ent.  Generally the court follows the ordinary
rule that the unsuccessful party shall pay the costs of the litigation, such costs being taxed upon the
usual scale between party to party.  In a usual case, a party who is awarded costs will still be out of
pocket to the extent that the costs payable to his solicitor exceed the costs he has recovered from his
opponent.  This happens because of the different bases for the assessment of costs which apply as torecovery between the parties (the party and party basis) and recovery by the solicitor from his client
(the solicitor and client basis).
Only in isolated cases have the successful IPR plaintiff been refused relief at trial and have
been ordered to pay the costs of the action e.g. defendant offered undertaking at an early stage of thetrial and the plaintiff refuses the offer, trivial case where action commenced without notice to an
innocent purchaser, etc.  There are also a handful of instances where the successful defendant been
refused costs e.g. defendant acted dishonestly.
(c) destruction or other disposal of infringing goods and materials/implements for their
production
Delivery up of the infringing goods or destruction on oath is ancillary to the grant of an
injunction.  The power of the court to grant this remedy evolved from the equitable principles:  it is
not ordered because the plaintiff has any sort of proprietary right over the items.  Though the normal
form of the order is for actual destruction or delivery up of the infringing articles, it may be modified
in certain cases.  For example, in trade mark infringement cases an order for obliteration/erasure ofthe infringing mark may be ordered if possible, and in patent infringement cases if the infringing
article can be rendered non-infringing by some alteration or by removal of some part.
An order for delivery up or destruction of materials/implements to produce the infringing
article will not be granted if the materials/implements are not themselves an infringement but may beused as part of an infringing apparatus.  For in stance, in literary copyright infringement cases the
printing plates may be the subject matter of such an order but it is very unlikely that the courts would
include the actual printing machine itself as part of the order for destruction.
(d) any other remedies
The court also has equitable powers to order that the defendant publish corrective statements
and apologies to correct the effect of the infringement.IP/C/W/327/Add.1
Page 44
As to the quantum of damages, it is for the court to decide.
8. Please explain the kind and amounts of criminal penalties including implement and fines
regarding intellectual property rights, citing th e relevant provisions of your country's law.  In
particular, are the crimes persecuted only when the injured party has made a formalcomplaint?  Please explain whether penalties are consistent with Article 61 of the TRIPS
Agreement, which requires provisions for a sufficient deterrent, consistently with the level of
penalties applied for crimes of a corresponding gravity.
1. Criminal penalties including implement and fines regarding intellectual property rights are as
follows:
(i) Copyright Act 1987
Section 41 – a fine not exceeding RM10,000 for each infringing copy or imprisonment for a term
not exceeding 5 years or both
- any subsequent offence, a fine not exceeding RM20,000 for each infringing copy orimprisonment for a term not exceeding 10 years or both
- makes or has in possession of any contrivance for making infringing copies – a fine
not exceeding RM20,000 or not exceeding 10 y ears of imprisonment or both subsequent
offence – RM40,000 or not exceeding 20 years or both
Section 41A – Controller of copyright or his deputy may compound any offence under the Act.
(ii) Patents Act 1983
Section 64 – Unauthorized claim or patent - a fine not exceeding RM15,000 or
imprisonment not exceeding 2 years or both.
(iii) Trade Marks Act 1976
Section 81 – Falsely representing a trade mark on register -  a fine not exceeding RM500
or an imprisonment term not exceeding 2 months or both.
2. Yes, the crimes will only be prosecuted when the complainant lodge a formal complaint to the
authorities.
3. Penalties provided under relevant IP laws are consistent with Article 61 of the TRIPS
Agreement.
9. Please indicate titles of laws and regulations and their provisions in which the
suspension of the release of counterfeit tradem ark or pirated copyright goods is prescribed, as
stipulated in Article 51 of the TRIPS Agreement.
Counterfeit Trademark
The competent authority for enforcing border control measures is the Customs Department.
Any person may submit an application to the Registrar of Trade Marks supported by documents
and information relating to the goods stating that:IP/C/W/327/Add.1
Page 45
(i) he is the proprietor of a registered trade mark or an agent of the proprietor
having the power to submit such an application;
(ii) that, at a time and place specified in the application, goods which are
counterfeit trade mark goods are expected to be imported for the purpose of
trade;  and
(iii) he objects to such importation.
[Section 70D(1) Trade Marks Act 1976]
In practice, there is a standard form for this application i.e. Form TM 30.  Upon the grant of
approval, the Registrar of Trade Marks shall also require the applicant to deposit a security.  The
quantum of the security deposit must, in the opinion of the Registrar be sufficient to:
(i) reimburse the government for any liability or expense it is likely to incur as a
result of the seizure of the goods;
(ii) prevent abuse and to protect the importer;  or
(iii) pay such compensation as may be ordered by the Court if the applicant fails
to take action for infringement within the retention period.
[Section 70E Trade Marks Act 1976]
If approval is granted, it is valid for only sixty (60)days commencing from the day approval
was given, unless withdrawn before the end of the period by the applicant. [Section 70D(95) Trade
Marks Act 1976].
Once approval is granted, the Registrar of Trade Marks will immediately take the necessary
measures to notify the Customs of the impending shipment.  The Customs shall then take the
necessary action to seize and detain the identified goods.
As soon as is reasonably practicable after the goods are seized, the Customs shall issue a
notice to the Registrar, importer and applicant of the seizure and the whereabouts of the goods, and
that unless an action for infringement is instituted by the applicant within a specified period from the
date of the notice the goods will be released to the importer. [Section 70G Trade Marks Act 1976].  If
the applicant requires an extension of time to file the infringement suit, he may request of the same
from the Registrar of Trade Marks.
The Registrar may permit the applicant or the importer to inspect the seized goods and to
remove a sample of the seized goods if he agrees to give the requisite written undertakings, namely
that he will:
- return the sample of the seized goods to the Registrar at a specified time that is
satisfactory to the Registrar;  and
- take reasonable care to prevent damage to the sample.IP/C/W/327/Add.1
Page 46
[Section 70H Trade Marks Act 1976]
If the applicant fails to take action for infringement within the retention period, the importer
or the owner of the goods may apply to the court for an order of compensation against the applicant.
[Section 70K Trade Marks Act 1976].
Pirated Copyright
The competent authority for enforcing border control measures is the Customs Department,
though in copyright cases the Ministry of Domestic Trade and Consumer Affairs and the Police are
also empowered to search for and seize any infringing copies which are prohibited from being
imported into Malaysia. [Section 39(6) Copyright Act 1987].
The owner of copyright in any work, or any person authorised by him may make an
application to the Controller of Copyright to request that during the period specified in the application
copies of the work made outside Malaysia without the consent of the copyright owner shall be treated
as infringing copies.  The application shall:
(i) be in such form as may be prescribed;
(ii) state that the person named in it is the owner of the copyright;  and
(iii) be supported by such documents and information, and accompanied by such
fee as may be prescribed.
[Section 39(1A) Copyright Act 1987]
Upon receipt of the application the Controller of  Copyright shall inform the applicant whether
the application has been approved and if so specify the period during which the copies will be treated
as infringing copies.  Upon approval, the Controll er of Copyright shall require the copyright owner to
deposit a security which in the Controller's opinion is sufficient to reimburse the government for any
liability or expenses which may be incurred in consequence of the detention of the infringing copies
or in consequence of anything done in relation to a copy so detained.
[Section 39(5) Copyright Act 1987]
When seizures are made, the seizing officer shal l forthwith give written notice to the owner of
the infringing copies details of such seizure and the grounds thereof.
[Section 39(7) Copyright Act 1987]IP/C/W/327/Add.1
Page 47
UNITED STATES
A. GENERAL
1. Please describe, in relation to each form of  intellectual property covered by the TRIPS
Agreement, including plant variety protection, the manner in which national treatment and
most favoured nation treatment are provided to nationals of other WTO Members.
Malaysia's intellectual property legislations accord national treatment and most favoured
nation treatment to nationals of other WTO members.  For plant varieties protection we are in the
process of drafting the legislation using a sui generis system.
B. COPYRIGHT AND RELATED RIGHTS
2. Please explain whether and how the copyright law of Malaysia complies with Article 9 of
the TRIPS Agreement requiring that Members co mply with all Articles 1 through 21 of the
Berne Convention (1971), except Article 6 bis, since Members do not have rights or obligations
relating to the latter Article under the TRIPS Agreement.
Malaysia is a member of Berne Convention since 1 October 1990.  The Copyright Act 1987
has been amended to comply with the TRIPS Agreement including Article 6 bis of the Berne
Convention.
3. Please explain how the copyright law of Malaysia protects computer programs as
literary works and compilations of data as required by Article 10 of the TRIPS Agreement.
Section 7 of the Copyright Act 1983 includes computer programs and compilations of data
under literary works as required by Article 10 the TRIPS Agreement.
4. Article 11 of the TRIPS Agreement requires that rental rights for computer programs
and cinematographic works be available.  Please  cite to the corresponding provision of the
copyright law of Malaysia.
Section 13(f) of the Copyright Act 1987 provides rental rights for computer programs and
cinematographic works.
5. Please state the length and terms of protec tion the copyright law of Malaysia provides
for a work other than a photographic work or a work of applied art and cite to the relevant
provision of law.
Length and terms of protection under the copyright law of Malaysia is covered under
Section 16 to 23B.
6. Please describe the protection the copyright law of Malaysia provides for performers,
and the term of the protection.
Section 10A, 16A and 23A provides for protection for performers and the term of the
protection.IP/C/W/327/Add.1
Page 48
Section  10A states:
10A. Qualification for protection of performer
Performers' right shall subsist in every live performances of which the performer is:
(a) a citizen or permanent resident of Malaysia;  or
(b) not a citizen or permanent resident of Malaysia but whose  performance
(i) takes place in Malaysia;
(ii) is incorporated in sound recordings that are protected under this Act;  or
(iii) has not been fixed in a sound recording but is included in a broadcast
qualifying for protection under this Act.
Section  16A states:
16A. Nature of performers' right
(1) Performers' right shall be the exclusive right to control in Malaysia:
(a) the communication to the public of a live performance, except where the live
performance used in such communication is itself a live broadcast performance;
(b) the fixation of an unfixed performance;
(c) the reproduction of the fixation of a live performance if:
(i) the fixation itself was done without the performer's consent;
(ii) the reproduction is made for purposes different from those for which the
performer gave consent;  or
(iii) the fixation was made in accordance with the provisions of subsection (3),
and the reproduction is made for purposes different from those referred to inthose provisions;
(d) the first making available to the public of a fixation of a live performance, or copies
thereof, through sale or other transfer of ownership;  and
(e) rental to the public of a fixation of a live performance, or copies thereof, irrespective
of the  ownership of the copy rented.
(2) A performer shall cease to have the exclusive right under subsection (1) once he has given
consent to the fixation of his live performance.
(3) Notwithstanding subsection (1), the right to control under that subsection does not include the
right to control:
(a) a direct or an indirect sound recording or an indirect film of a live performance:IP/C/W/327/Add.1
Page 49
(i) being a sound recording or film made solely for the purpose of the private
and domestic use of the person who made it;  or
(ii) being a sound recording or film made solely for the purpose of use in
scientific research;
(b) a direct or indirect sound recording or film of a live performance:
(i) made for the purpose of, or associated with, the  reporting of news or current
affairs;
(ii) made for the purpose of criticism or review;  or
(iii) made solely for the purpose of a judicial proceeding or the giving of
professional advice by a legal practitioner;
(c) an indirect sound recording or film of a live performance:
(i) being a sound recording or film made by, or on behalf of, the body
administering an educational institution  solely for the educational purposes
of that institution or of another educational institution;  or
(ii) being a sound recording or film made by, or on behalf of, the body
administering an institution assisting pers ons with a print disability solely for
the purpose of the provision, whether by the institution or otherwise, ofassistance to persons with a visual, aural,  intellectual and print disability;
(d) a direct sound recording or film of a live performance made by a broadcaster who has
the consent of the performer to broadcast the live performance, being a recording
made solely for the purpose of making that broadcast provided that it is destroyed
before the end of  the period of twelve  months beginning on the day on which any of
those copies is first used for broadcasting the live performance;
(e) a direct or an indirect sound recording or an indirect film of a live performance made
by a person who reasonably believes, due to a fraudulent or innocent
misrepresentation made to the person, that the performer has authorised the making of
the recording by the person;
(f) a copy of a sound recording or film referred  to in paragraphs (a), (b), (c) and (d),
being a copy made solely for a purpose referred to in any of those paragraphs;
(g) a copy of a sound recording or film referred to in paragraphs (e), being a copy made
solely for the purpose referred to in that paragraph;  and
(h) a copy of a sound recording or film referred to in paragraph (f), being a copy made:
(i) by a person who believes, due to a fraudulent or innocent representation
made to the person, that the performer has consented to the making of thecopy;  or
(ii) solely for a purpose referred to in paragraphs (a), (b), (c) and (d).
(4) For the purpose of this section:IP/C/W/327/Add.1
Page 50
"direct" in relation to a sound recording or film of a live performance, means made directly
from a live performance;
"indirect" in relation to a sound recording or film of a live performance, means made from a
broadcast or rebroadcast of the live performance.
16B. Equitable remuneration
(1) Where a sound recording is published for commercial purposes or a reproduction of such
recording is publicly performed or used directly for broadcast or other communication to the public,
an equitable remuneration for the performance shall be payable to the performer by the user of the
sound recording.
(2) Remuneration shall not be considered inequitable merely because it was paid by way of a
single payment or at the time of the transfer of the rental right.
(3) Nothing in this section shall be construed so as to deprive a performer of the right to agree by
contract on terms and conditions more favourable for him in respect of his live performance.
(4) For the purpose of this section:
"published for commercial purpose" means the sound recording has been made available to
the public by  wire or wireless means in such a way that members of the public may access them from
a place and at a time individually chosen by them;
"rental right" means the right under subsection (1)(e) of section 16A.
Section  23(A) states:
23A. Duration of performers' Rights
Rights in a live performance which subsists under this Act shall continue to subsist until the
expiry of a period of fifty years computed from the beginning of the calendar year next following the
year in which the live performance was given.
7. Article 14.2 of the TRIPS Agreement provides that producers of phonograms are to
enjoy the right to authorize or prohibit the direct or indirect reproduction of their phonograms.
Article 14.2 requires that producers of phonograms are to have the right to authorize or
prohibit the commercial rental to the public of originals or copies of their phonograms.  Please
describe how the copyright law of Malaysia implements these obligations and indicate the term
of protection.
Section 13 of  the Copyright Act 1987 provides that:
(1) Copyright in a literary, musical or artistic work, a film, a sound recording or a derivative work
shall be the exclusive right to control in Malaysia -
(a) the reproduction in any material form provided that, without prejudice to paragraph
(e), the exclusive right to control the distribution of copies refer only to the act ofputting into circulation copies not previously put into circulation in Malaysia and not
to any subsequent distribution of those copies or any subsequent importation of those
copies into Malaysia;IP/C/W/327/Add.1
Page 51
(aa) the communication to the public;
(b) the performance, showing or playing to the public;
(c) the distribution of copies to the public by sale or other transfer of ownership;  and
(d) the commercial rental to the public,
of  the whole work or a substantial part thereof, either in its original or derivative form.
(2) Notwithstanding subsection (1), the right of control under that subsection does not include the
right to control -
(a) the doing of any of the acts referred to in subsection (1) by way of fair dealing for
purposes of non-profit research, private study, criticism, review or the reporting ofcurrent events, subject to the condition that  if such use is public, it is accompanied by
an acknowledgement of the title of the work and its authorship, except where the
work is in connection with the doing of any of such acts for the purposes of non-
profit research, private study and the reporting of current events by means of a sound
recording, film or broadcast;
(b) the doing of any of the acts referred to in subsection (1) by way of parody, pastiche or
caricature;
(c) the inclusion in a film or broadcast of any artistic work situated in a place where it
can be viewed by the public;
(d) the reproduction and distribution of copies of any artistic work permanently situated
in a place where it can be viewed by the public;
(e) the incidental inclusion of a work in an artistic work, sound recording, film or
broadcast;
(f) the inclusion of a work in a broadcast, performance, showing or playing to the public,
collection of literary or musical works, sound recording or film, if such inclusion ismade by way of illustration for teaching purposes and is compatible with fair
practice;
provided that mention is made of the source and of the name of the author which
appears on the work used;
(ff) any use of a work for the purpose of an examination by way of setting the questions,
communicating the questions to the candidates or answering the questions:
provided that a reprographic copy of a musical work shall not be made for use by an examination
candidate in performing the work;
(g) the recording made in schools, universities or educational institutions of a work
included in a broadcast intended for such schools, universities or educational
institutions;IP/C/W/327/Add.1
Page 52
(gg) the making of a sound recording of a broadcast, or a literary, dramatic or musical
work, sound recording or a film included in the broadcast insofar as it consists of
sounds if such sound  recording of a broadcast is for the private and domestic use of
the person by whom the sound recording is made;
(ggg) the making of copies of television broadcasts which are subtitled or otherwise
modified for people who are deaf or hard  of hearing, or physically or mentally
handicapped in other ways and the issuing of such copies to the public by non-profit
making bodies or institutions which the Minister may, by order, prescribe;
(h) the reading or recitation in public or in a broadcast by one person of any reasonable
extract from a published literary work if accompanied by sufficientacknowledgement;
(i) any use made of a work by or under the direction or control of the Government, by
the National Archives or any State Archives, by the National Library, or any State
library, or by such public libraries and educational, scientific or professional
institutions as the Minister may by order prescribe, where such use is in the publicinterest and is compatible with fair practice and the provisions of any regulations,
and:
(i) no profit is derived therefrom, and
(ii) no admission fee is charged for the performance, showing or playing, if any,
to the public of the work thus used;
(j) the reproduction of any work by or under the direction or control of a broadcast
service wholly-owned by the Government where such reproduction or any copies
thereof are intended exclusively for a lawful broadcasting and are destroyed before
the end of the period of six calendar months  immediately following the making of the
reproduction or such longer period as may be agreed between the broadcastingservice and the owner of the relevant part of the copyright in the work:
provided that any reproduction of a work made under this paragraph may, if it is of exceptional
documentary character, be preserved in the archives of the broadcasting  service which are hereby
designated official archives for the purpose, but subj ect to this Act, shall not be used for broadcasting
or for any other purpose without the consent of the ow ner of the relevant part of the copyright in the
work;
(k) the performance, showing or playing of a work by a nonprofit making club or
institution where such performance, showing or playing is for charitable or
educational purposes and is in a place where no admission fee is charged in respect of
such performance, showing or playing;
(l) any use of a work for the purposes of any judicial proceedings, the proceedings of a
royal commission, a legislative body, a statutor y or Governmental inquiry, or of any
report of any such proceedings, or for the purpose of the giving of professional advice
by a legal practitioner;
(m) the making of quotations from a published work if they are compatible with fair
practice and their extent does not exceed that justified by the purpose, includingquotations from newspaper articles and periodicals in the form of press summaries:IP/C/W/327/Add.1
Page 53
provided that mention is made of the source and of the name of the author which appears on the work
thus used;
(n) the reproduction by the press, the broadcasting or the showing to the public of articles
published in newspapers or periodicals on current topics, if such reproduction,broadcasting or showing has not been expressly reserved:
provided that the source is clearly indicated;
(o) the reproduction by the press, the broadcasting or the performance, showing or
playing to the public of lectures, addresses and other works of the same nature which
are delivered in public if such use is for informatory purposes and has not been
expressly reserved;  and
(p) the commercial rental of computer programs, where the program is not the essential
object of the rental.
(3) For the purposes of subsection (2)(l), "a legislative body" means the Parliament of Malaysia
or, in relation to a State, the authority having pow er under the Constitution of that State to make laws
for the State, as the case may be.
C. T
RADEMARKS
8. Please describe the subject matter that can comprise a trademark under the trademark
law of Malaysia.
A mark which includes a device, brand, heading, label, ticket, name, signature, word, letter,
numeral or any combination thereof, used or proposed to be used in relation to goods or services for
the purpose of indicating or so as to indicate a connection in the course of trade between the goods or
services and a person having the right either as proprietor or as registered user to use the mark
whether with or without an indication of the identity of that person.
9. Please describe the procedure that must be followed to register a trademark in
Malaysia, citing the relevant provisions of the law, and describe the rights that the owner of a
registered mark can exercise.
Section 10, 12, 13, 14, 14A, 15, 16 and 19 of the Trade Marks Act 1976 indicates
registerability of the Trade Marks in Malaysia.
Application for registration is specified under section 25 of the Act.  The procedures for
registration is laid down under the Trade Marks Regulations 1997 as follows:
- An application for the registration of a mark in a prescribed form and accompanied
by a prescribed fees shall be made to the Registrar and should contain inter alia;
a reproduction of  the mark and list of  goods or services applied in accordance to the
international classification of goods and services.
- The rights and power given to the owner are accorded under section 34 and 35 of this
Act as follows:
Section 34 (Powers of registered proprietor) states:IP/C/W/327/Add.1
Page 54
(a) the person for the time being entered in the Register  as registered proprietor of a
trade mark shall, subject to any rights appe aring from such Register to be vested in
any other person, have power to assign the same and give good discharges for any
consideration for the assignment;
(b) any equities in respect of a trade mark may be enforced in like manner as in respect of
any other personal property.
Section 35 (Rights given by Registration) states:
(1) The registration of a person as registered proprietor of a trade mark in respect of any goods or
services shall, if valid, give or be deemed to have been given to that person the exclusive right to the
use of the trade mark in relation to those goods or services subject to any conditions, amendments,
modifications or limitations entered in the Register.
(2) Where two or more persons are proprietors of registered trade marks which are identical or
nearly resembling each other rights of exclusive use of either of those trade marks are not (except so
far as their respective rights have been defined by the Registrar or the Court) acquired by any one of
those persons as against any other of those persons by registration of the trade mark but each of thosepersons by registration of the trade mark but each of those persons have the same rights as against
other persons (not being registered users) as he would if he were the sole registered proprietor.
10. Please provide the length and terms of prot ection that the trademark law of Malaysia
provides for a trademark.
Section 32 of the Act provides that the duration of protection of a trade mark is 10 years but
may be renewed for a period of ten years from the date of expiration of the original registration.
D. G
EOGRAPHICAL INDICATIONS
11. Please describe in detail how the laws of Malaysia provide for the recognition and
protection of geographical indications required by Article 22.2 of the TRIPS Agreement, citing
to the relevant provisions of law or regulation, and provide examples of geographical
indications so protected.
The protection of geographical indications in Malaysia is laid down under the Geographical
Indications Act 2000 which was enforced on 15 August 2001.
Under section 3 of this Act states, protection shall be given to a geographical indication:
(a) regardless whether or not the geographical indication is registered under this Act;
and
(b) as against another geographical indication which, although literally true as to the
country, territory, region or locality in which the goods originate, falsely represents tothe public that the goods originate in another country, territory, region or locality.
As for exclusion from protection laid under section 4, it states:
Notwithstanding section 3, the following shall not be protected as geographical indications:
(a) geographical indications that do not correspond to the meaning of "geographical
indication" as defined in section 2;IP/C/W/327/Add.1
Page 55
(b) geographical indications which are contrary to public order or morality;
(c) geographical indications which are not or have ceased to be protected in their country
or territory of origin;  or
(d) geographical indications which have fallen into disuse in their country or territory of
origin.
Natural or agricultural product or any product of handicraft or industry which conform to
section 3 or 4 may be registered under geographical indication.
12. Please describe in detail the manner in which the higher level of protection required for
wines and spirits under Article 23.2 of the TRIPS Agreement is implemented, citing to the
relevant provisions of law or regulation, and provide examples of geographical indications.
Section 5(1) of the Geographical Indications Act 2000 states that any interested person may
institute proceedings in the court to prevent, in respect of geographical indications:
(1) any use in the course of trade of a geographical indication identifying wines for wines not
originating in the place indicated by the geographical indication in question or a geographical
indication identifying spirits for spirits not originating in the place indicated by the geographicalindication in question, even where the true origin of the wines or spirits is indicated or the
geographical indication is used in translation or accompanied by expressions such as "kind", "type",
"style" or "imitation".
(2) The Court may grant an injunction to pr event any unlawful use of the geographical
indication and award any damages and any other legal remedy or relief as it deems fit.
E. I
NDUSTRIAL DESIGNS
13. Please describe the procedure that must be followed to obtain protection for industrial
design, citing to the provisions of the law of Malaysia, and describe the nature of the protectionprovided.
Protection for industrial designs in Malaysia is accorded under the Industrial Designs Act
1996.  Section 11 of the Act provides that,
(1)  The original owner of an industrial design  is entitled to make an application for the
registration of the industrial design.
(2)  Where two or more persons own interests in an industrial design, all of the persons
owning such interests, acting jointly, are, subj ect to any agreement among such persons to the
contrary, entitled to make an application for the registration of  the industrial design.
Section  12, states that:
(1) Subject to this Act, an industrial design shall not be registered unless it is new.(2) An industrial design for which an application for registration is made shall not be considered
to be new if, before the priority date of that application, it or an industrial design differing from it onlyin immaterial details or in features commonly used in the relevant trade -
(a) was disclosed to the public anywhere in Malaysia;  orIP/C/W/327/Add.1
Page 56
(b) was the subject matter of another application for registration of an industrial design
filed in Malaysia but having an earlier priority date made by a different applicant in
so far as that subject matter was included in a registration granted on the basis of that
other application.
(3) For the purposes of paragraph (2)(a), an industrial design shall not be deemed to have been
disclosed to the public solely by reason of the fact that, within the period of six months preceding the
filing date of an application of registration:
(a) it appeared in an official or officially recognized exhibition;  or
(b) it has been disclosed by a person other than the applicant or his predecessor in title as
a result of an unlawful act committed by that other person or another person.
The procedures for registration are laid down under section 14 which states that,
(1) An application for the registration of an industrial design:
(a) shall be made in the prescribed form and shall be filed at the Industrial Designs
Registration Office;
(b) shall be accompanied by the prescribed number of representations of the article to
which the industrial design is applied;
(c) shall contain a statement of novelty in respect of the industrial design to which the
application relates;  and
(d) shall be accompanied by the prescribed filing fee.
(2) Where the applicant's ordinary residence or principal place of business is outside Malaysia, he
shall appoint an agent in Malaysia upon whom notice or process relating to the application for
registration of an industrial design may be served, and if the applicant fails to appoint an agent, the
Registrar may refuse to proceed with the application until such agent has been appointed.
14. Please describe the procedure that must be followed to obtain protection for textile
designs and cite to the relevant provisions of law or regulation.
The definition of industrial designs under the Industrial Designs Act 1996 includes textile
designs.
F. PATENTS
15. Please describe in detail the way in which the patent law of Malaysia implements
Article 27 of the TRIPS Agreement, indicating  any exceptions provided for, and including
details regarding the protection for micro-organisms and non-biological and microbiological
processes and plant varieties.  Please cite to the relevant provisions of the law.
The legislation provides for the protection of patent under section 11, 12, 14, 15 and 16 of the
Patents Act 1983.
Exception are provided under section 13 of the Act which states that,IP/C/W/327/Add.1
Page 57
- discoveries, scientific theories and mathematical methods;
- plant or animal varieties or essentially biological processes for the production of
plants or animals, other than man-made  living micro-organisms, micro-biological
processes and the products of such micro-organism processes;
- schemes, rules or methods for doing business, performing purely mental acts or
playing games;
- methods for the treatment of human or animal body by surgery or therapy, and
diagnostic methods practised on the human or animal body.
Malaysia gives protection for man-made living micro-organism, micro- biological processes
and the products of such micro-organism processes as under section 13.  The non-biological processes
are included under general provisions of patentability.  We are currently working on a Draft Law on
Plant Varieties.
16. Please describe in detail the rights provided patent holders under the patent law of
Malaysia and cite to the relevant provisions of law.
Section 18 of the Patents Act 1983 states the right to patent which includes,
(1) Any person may make an application for a patent either alone or jointly with another.(2) Subject to Judicial Assignment of patent application or patent, the rights to a patent shall
belong to the inventor.
(3) Where two or more persons have jointly made an invention, the rights to a patent shall belong
to them jointly.
(4) If two or more persons have separately and independently made the same invention, and each
of them has made an application for a patent, the right to a patent for that invention shall belong to the
person whose application has the earliest priority date.
17. Please describe in detail any provisions in the laws of Malaysia permitting unauthorized
use of a patent, citing to the relevant provisions of law, and describe in detail the conditions
under which such use can occur.
The Patents Act 1983 provides for compulsory licence of a patent under certain conditions in
compliance with Article 31 of TRIPS.  The prov isions of the law are provided under section 49;
49 (1):  At any time after the expiration of three years from the grant of a patent, or four years from
the filing date of the patent application, whichever is the later, any person may apply to the Registrar
for a compulsory licence under any of the following circumstances:
(a) where there is no production of the patented product or application of the patented
process in Malaysia without any legitimate reason;
(b) where there is no product produced in Malaysia under the patent for sale in any
domestic market, or there are some but they are sold at unreasonably high prices or
do not meet the public demand without any legitimate reason.IP/C/W/327/Add.1
Page 58
(2) A compulsory  licence shall not be applied for unless the person making the application has
made efforts to obtain authorisation from the owne r of the patent on reasonable commercial terms and
conditions but such effort s have not been successful within a reasonable period of time.
(3) The application for a compulsory licence shall be in compliance with such regulations as may
be prescribed by the Minister.
Section  49A states that:
(1) If the invention claimed in a patent ("later patent") cannot be worked in Malaysia without
infringing a patent granted on the basis of an application benefiting from an earlier priority date
("earlier patent"), and if the invention claimed in the later patent constitutes, in the opinion of theBoard, an important technical advance of considerable economic significance in relation to the
invention claimed in the earlier patent, the Board, upon the request of the owner of the later patent, the
licensee of a licence contract under the later patent or the beneficiary of a compulsory licence under
the later patent, may grant a compulsory licence to the extent necessary to avoid infringement of the
earlier patent.
(2) If a compulsory licence is granted under subsection (1), the Board, upon the request of the
owner of the earlier patent, the licensee of a licence contract under the earlier patent or the beneficiary
of a compulsory licence under the earlier patent, may grant a compulsory licence under the later
patent.
Section  50 states that:
(1) In an application for a compulsory licence under section 49 or section 49A, the applicant shall
set forth the amount of royalty, the conditions of the exploitation of the patent and the restrictions ofthe rights of the licensor or the licensee, as the case may be, and a request for the said licence.
(2) Where an application for a compulsory licence is filed pursuant to section 49 or section 49A,
and this section, the Registrar shall notify the applicant, the licensor or the licensee, as the case may
be, of the date the application shall be considered by the Board.
(3) The licensor or the licensee, as the case may be, shall be furnished with a copy of the
application as mentioned in subsection (1).
Section  51 states that:
(1) In considering the application for a compulsory licence under section 49 or section 49A, the
Board may require the applicant, the licensor or the licensee, at the case may be, to appear before the
Board to give a statement or to hand to the Board any document or any other item.
(2) When the application has been considered by the Board and a decision has been made, the
applicant, the licensor or the licensee, as the case may be, shall be notified of the decision.
Section  52 states that:
Upon the granting of the compulsory licence to the applicant the Board shall fix:
(a) the scope of the licence specifying in particular for what period the licence is granted
and to which of the acts referred to in paragraph (a) of subsection (1), and
subsection (3), of section 36 the licence extends except that it may not extend to the
act of importation;IP/C/W/327/Add.1
Page 59
(b) the time limit within which the beneficiary of the compulsory licence shall begin to
work the patented invention in Malaysia;  and
(c) the amount and conditions of the royalty due from the beneficiary of the compulsory
licence to the owner of the patent.
Section  53 states that:
(1) A compulsory licence granted by the Board -
(a) shall not be assigned otherwise than in connection with the goodwill or business or
that part of the goodwill or business in which the patented invention is used;
(b) shall be limited to the supply of the patented invention predominantly in Malaysia.
(2) The beneficiary of the compulsory licence shall not conclude licence contracts with third
persons under the patent in respect of which the compulsory licence was granted.
and section  54 states that;
(1) Upon the request of the owner of the patent or of the beneficiary of the compulsory licence,
the Board may amend the decision granting the compulsory licence to the extent that new facts justify
such amendment.
(2) Upon the request of the owner of the patent, the Board shall cancel the compulsory licence:
(a) if the ground for the grant of the compulsory licence no longer exists;
(b) if the beneficiary of the compulsory licence has, within the time limit fixed in the
decision granting the licence, neither begun the working of the patented invention in
Malaysia nor made serious preparations towards such working;
(c) if the beneficiary of the compulsory licence does not respect the scope of the licence
as fixed in the decision granting the licence;
(d) if the beneficiary of the compulsory licence is in arrears of the payment due,
according to the decision granting the licence.
(3) The beneficiary of the compulsory licence may surrender the licence by a written declaration
submitted to the Registrar who shall record the surrender in the Register, publish it, and notify the
owner of the patent.
(3A) Where a compulsory licence has been granted in respect of a patent, the Registrar shall not
accept or record the said surrender except upon receipt of a signed declaration by which the
beneficiary of the compulsory licence consents to the said surrender.
(4) The surrender shall take effect from the date the Patent Registration Office receives the
declaration of the surrender.
Any person aggrieved by any decision or order of the Registrar or the Board may appeal to
the High Court.  However, to date Malaysia has not invoke compulsory licence to any patent holder.IP/C/W/327/Add.1
Page 60
18. What term of protection does the patent law of Malaysia provide for patents?  Please
describe any provisions for extension of the term of protection and cite to the relevant
provisions of the law.
The duration of a patent shall be twenty years from the filing date of the application.  A patent
shall be deemed to be granted and shall take effect on the date the certificate of grant of the patent isissued as provided for under section 35 of the Act.
G. L
AYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
19. Please describe in detail the protection for layout-designs of integrated circuits provided
under the laws of Malaysia, including the term of  protection, and cite to the relevant provisions
of law.
The protection for layout-designs of integrated circuits is laid down under the Layout-Designs
of Integrated Circuits Act 2000.  Section 5 of the Act states that;
(1) A layout-design shall be eligible for protection under this Act if the layout-design is an
original layout-design and the right holder of the layout-design was, at the time the layout-design was
created, a qualifying person.
(2) For the purposes of subsection (1), a layout-design shall be original if:
(a) it is the result of its creator's own intellectual effort and is not commonplace among
creators of layout-designs and manufacturers of integrated circuits at the time of itscreation;  or
(b) in relation to a layout-design that consists of a combination of elements and
interconnections that are commonplace, the combination, taken as a whole, is the
result of its creator's own intellectual effort and is not commonplace among creators
of layout-designs and manufacturers of integrated circuits at the time of its creation.
(3) This Act protects all independently created layout-designs referred to in subsection (1) even if
they are identical and, subject to section 8, regardless of when they were created.
(4) A layout-design shall be deemed not to have been created until it has been fixed in a material
form or incorporated into an integrated circuit, whichever is earlier.
Duration of protection
(1) A layout-design shall be protected under this Act for a period of ten years from the date the
layout-design is first commercially exploited in Malaysia or elsewhere.
(2) Notwithstanding subsection (1), the protection granted to a layout-design under this Act shall
lapse fifteen years after the date the layout-design is created.
Rights of right holder
The right holder of a protected layout-design shall have the following rights:
(a) the right to reproduce, and to authorize the reproduction of, all or a substantial part of
his protected layout-design, whether by incorporation into an integrated circuit or
otherwise;  andIP/C/W/327/Add.1
Page 61
(b) the right to commercially exploit, and to authorize the commercial exploitation of, his
protected layout-design, an integrated circuit in which the protected layout-design is
incorporated or an article that contains an integrated circuit in which the protected
layout-design is incorporated.
H. PROTECTION OF UNDISCLOSED INFORMATION
20. Please describe in detail how the laws of Malaysia provide for the protection of
undisclosed information as required by Article 39.2 of the TRIPS Agreement and provide
citations to the relevant provisions of law.
Generally, the protection of undisclosed information in Malaysia is laid down under the rule
of common law and equity.  Any natural person or legal entity may not disclose trade secrets in his or
its possession in a manner that is contrary to honest  practice in trade.  A commercial or industrial
activity shall be considered secret if, due to its nature, it is not known, it draws its commercial valuefrom its confidentiality, reasonable measure have been taken to maintain its confidentiality, or it is not
easily accessible to an ordinary person having skill in the art.  Disclosure shall include making use of
information, tests or other secret information presen ted to the competent authorities in order to obtain
a marketing authorisation necessary for pharmaceuticals and agricultural products containing new
chemical material provided that a tangible effort was furnished to obtain such products.
The Official Secrets Act 1972 prevents from any disclosure of information made by a public
servant or any unauthorised person.
21. Please describe in detail the manner in which protection is provided test data regarding
pharmaceutical and agricultural chemical prod ucts submitted to the government in order to
obtain marketing approval in Malaysia and cite to the relevant provisions of law.
Generally, test data regarding pharmaceutical and agricultural chemical products submitted in
order to obtain marketing approval in Malaysia is protected under the ambit of the rule of common
law of breach of confidence.
Under the law of breach of confidence, submission of data of the above mentioned kind
would normally be protected against disclosure to third parties.  In other words, the Drug Control
Authority (DCA) could be prevented from disclosing an earlier applicant's data to a later applicant.
Hence, even in the absence of any specific law on data exclusivity, our common law relating to the
protection of confidential information would appear to be sufficient to protect test data from
unauthorised disclosure to third parties.  The regulatory authority could not be prevented from usingthe earlier applicant's data to assist it in evaluating and considering the latter applicant's application
for regulatory approval.
22. Are other applicants for marketing approva l for their own versions of a previously
approved pharmaceutical or agricultural chemical products permitted to rely on data submittedby the earlier applicant?  If so, how long a period of exclusively is given the earlier applicant
before such reliance becomes possible.
No, new applicants must submit new test data independently of previously approved data
submitted by earlier applicant.  Exclusivity of the earlier applicant is forever.IP/C/W/327/Add.1
Page 62
I. INFORCEMENT
23. Please describe in detail the manner in which the laws of Malaysia provide for effective
action against infringement of intellectual prop erty rights as required by Article 41.1 of the
TRIPS Agreement.
The laws of Malaysia provide for civil and criminal action against infringement of intellectual
property rights to wit;
(i) Civil action under
(a) Copyright Act 1987
Section  36.  Infringements
(1) Copyright is infringed by any person who does, or caused any other person to do, without the
licence of the owner of the copyright, an act the doing of which is controlled by copyright under this
Act.
(2) Copyright is infringed by any person who, without  the consent or licence of the owner of the
copyright, imports an article into Malaysia for the purpose of:
(a) selling, letting for hire, or by way of trade, offering or exposing for sale or hire, the
article;
(b) distributing the article;
(i) for the purpose of trade;  or
(ii) for any other purpose to an extent that it will affect prejudicially the owner of
the copyright;  or
(c) by way of trade, exhibiting the article in public,
where he knows or ought reasonably to know that the making of the article was carried out without
the consent or licence of the owner of the copyright.
(3) Copyright is infringed by any person who circumvents or causes any other person to
circumvent any effective technological measures that are used by authors in connection with the
exercise of their rights under this Act and that restrict acts, in respect of their works, which are not
authorized by the authors concerned or permitted by law.
(4) Copyright is infringed by any person who k nowingly performs any of the following acts
knowing or having reasonable grounds to know that  it will induce, enable, facilitate or conceal an
infringement of any right under this Act:
(a) the removal or alteration of any electronic rights management information without
authority;
(b) the distribution, importation for distributi on or communication to the public, without
authority, of works or copies of works knowing that electronic rights management
information has been removed or altered without authority.IP/C/W/327/Add.1
Page 63
(5) For the purpose of subsection (4) and section 41, "rights management information" means
information which identifies the works, the author of the work, the owner of any right in the work, or
information about the terms and conditions of use of the work, any numbers or codes that represent
such information, when any of these items of information is attached to a copy of a work or appears in
connection with the communication of a work to the public.
Section  37.  Action by owner of copyright and relief
(1) Subject to this Act, infringements of copyright shall be action-able at the suit of the owner of
the copyright and in any action for such an infringement, all such relief by way of damages,
injunction, accounts or otherwise, shall be available to the plaintiff as are available in any
corresponding proceedings in respect of infringement of other proprietary rights.
(2) Where in an action under this section, an infringement of copyright is proved or admitted, and
the court, having regards, in addition to all other material considerations to:
(c) the flagrancy of the infringement;  and
(d) any benefit shown to have accrued to the defendant by reason of the infringement,
is satisfied that effective relief would not otherwise be available to the plaintiff, the court in assessing
damages for the infringement, shall have power to award such additional damages by virtue of this
subsection as the court may consider appropriate in the circumstances.
(3) No injunction shall be issued in proceedings for infringement of copyright which requires a
completed or partly built building to be demolished or which prevents the completion of a partly built
building.
(4) For the purposes of this section and section 38:
(a) "action" includes a counter-claim, and reference to the plaintiff and to the defendant
in an action shall be construed accordingly;  and
(b) "court" means the appropriate High Court in Malaysia.
(5) For the purposes of this section, owner of th e copyright means the first owner or an assignee,
as the case may be, of the relevant part of the copyright.
Section  38.  Proceedings in case of copyright subject to exclusive licence
(1) This section shall have effect as to proceed ings in the case of any copyright in respect of
which an exclusive licence has been granted and is in force at the time of the events to which the
proceedings relate.
(2) Subject to this section, the exclusive licensee shall (except against the owner of the copyright)
have the same rights of action, and be entitled to the same remedies, under section 37 as if the licence
had been an assignment, and those rights and remedies shall be concurrent with the rights and
remedies of the owner of the copyright under that section.
(3) Where an action is brought either by the owner of the copyright or by the exclusive licensee,
and the action, in so far as it is brought under section 37, relates (wholly or partly) to an infringement
in respect of which they have concurrent rights of action under that section, the owner or licensee, as
the case may be, shall not be entitled, except with the leave of the court, to proceed with the action, inIP/C/W/327/Add.1
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so far as it is brought under that section and relates to that infringement, unless the other party is
either joined as a plaintiff in the action or added as a defendant; but this subsection shall not affect the
granting of an interlocutory injunction on the application of either of them.
(4) In any action brought by the exclusive licensee by virtue of this section, any defence which
would have been available to a defendant in the action, if this section had not been enacted and the
action have been brought by the owner of the copyrigh t, shall be available to that defendant as against
the exclusive licensee.
(5) Where an action is brought in the circumstances mentioned in subsection (3) and the owner of
the copyright and the exclusive licensee are not plaintiffs in the action, the court, in assessing
damages in respect of any infringement as is mentioned in that subsection :
(c) if the plaintiff is the exclusive licensee, shall take into account any liabilities (in
respect of royalties or otherwise) to which the licence is subject;  and
(d) whether the plaintiff is the owner of the copyright or the exclusive licensee, shall take
into account any pecuniary remedy awarded to the other party under section 37 inrespect of that infringement, or, as the case may require, any right of action
exercisable to the other party under that section in respect thereof.
(6) Where an action, in so far as it is brought under section 37, relates (wholly or partly) to an
infringement in respect of which the owner of the copyright and the exclusive licensee have
concurrent rights of action under that section, and in that section (whether they are both parties to it ornot) an account of profits is directed to be taken in  respect of that infringement, then subject to any
agreement of which the court is aware whereby the application of those profits is determined as
between the owner of the copyright and the exclus ive licensee, the court shall apportion the profits
between them as the court may consider just and shall give such directions as the court may consider
appropriate for giving effect to the appointment.
(7) In an action brought either by the owner of the copyright or by the exclusive licensee:
(a) no judgement or order for the payment of damages in respect of an infringement of
copyright shall be given or made under section 37, if a final judgement or order has
been given or made awarding an account of profits to the other party under that
section in respect of the same infringement;  and
(b) no judgement or order for an account of profit in respect of an infringement of
copyright shall be given or made under that section, if a final judgement or order has
been given or made awarding either damages or an account of profits to the other
party under that section in respect of the same infringement.
(8) Where, in an action brought in the circumstances mentioned in subsection (3), whether by the
owner of the copyright or by the exclusive licensee, the other party is not joined as a plaintiff (either
at the commencement of the action or subsequently) but is added as a defendant, he shall not be liable
for any costs in the action unless he enters an appearance and takes part in the proceedings.
(9) For the purposes of this section, the expression:
"exclusive licence" means a licence signed by or on behalf of an owner or a prospective
owner of copyright authorizing the licensee to the ex clusion of all other persons, to exercise a right
which by virtue of this Act would (apart from th e licence) be exercisable exclusively by the owner of
the copyright;  and "exclusive licensee" shall be construed accordingly;IP/C/W/327/Add.1
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"if the licence had been an assignment" means if, instead of the licence, there had been
granted (subject to terms and conditions corresponding as nearly as may be with those subject to
which the licence was granted) an assignment of the copyright in respect of its or their application to
the doing, at the place and time authorized by  the licence, of the acts so authorized;
"the other party", in relation to the owner of th e copyright, means the exclusive licensee, and
in relation to the exclusive licensee, means the owner of the copyright.
(b) Patents Act 1983
Section  58.  Acts deemed to be infringement
Subject to subsections (1), (2) and (3) of section 37 and section 38, an infringement of a
patent shall consist of the performance of any act referred to in subsection (3) of section 36 in
Malaysia by a person other than the owner of the patent and without the agreement of the latter in
relation to a product or a process falling within the scope of protection of the patent.
Section  59.  Infringement proceedings
(1) The owner of the patent shall have the right to institute Court proceedings against any person
who has infringed or is infringing the patent.
(2) The owner of the patent shall have the same  right against any person who has performed acts
which make it likely that an infringement will occur, which in this Part is referred to as an "imminent
infringement".
(3) The proceedings in subsections (1) and (2) may not be instituted after five years from the act
of infringement.
Section  60.  Injunction and award of damages
(1) If the owner of the patent proves that an infringement has been committed or is being
committed, the Court shall award damages and shall grant an injunction to prevent further
infringement and any other legal remedy.
(2) If the owner of the patent proves imminent infringement the Court shall grant an injunction to
prevent infringement and any other legal remedy.
(3) The defendant in any proceedings referred to in this section may request in the same
proceedings the invalidation of the patent, in which case the provisions of subsections (2) and (3) of
section 56 shall apply.
Section  61.  Infringement proceedings by licensee and beneficiary of compulsory licence
(1) For the purpose of this section, "beneficiary" means:
(a) any licensee unless the licence contract provides that the provisions of this
subsection do not apply or provides different provisions;
(b) the beneficiary of a compulsory licence granted under section 51.
(2) Any beneficiary may request the owner of the patent to institute Court proceedings for any
infringement indicated by the beneficiary, who shall specify the relief desired.IP/C/W/327/Add.1
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(3) The beneficiary may, if he proves that the owner of the patent received the request but refuses
or fails to institute the proceedings within three months from the receipt of the request, institute the
proceedings in his own name, after notifying the ow ner of the patent of his intention but the owner
shall have the right to join in the proceedings.
(4) Notwithstanding that the three-month period referred to in subsection (3) has not been
satisfied, the Court shall, on the request of the beneficiary, grant an appropriate injunction to prevent
infringement or to prohibit its continuation, if the beneficiary proves that immediate action is
necessary to avoid substantial damage.
(c) Trade Marks Act 1976
Section  38.  Infringement of a trade mark
(1) A registered trade mark is infringed by a person who, not being the registered proprietor of
the trade mark or registered user of the trade mark using by way of permitted use, uses a mark which
is identical with it or so nearly resembling it as is likely to deceive or cause confusion in the course oftrade in relation to goods or services in respect of which the trade mark is registered in such manner as
to render the use of the mark likely to be taken either -
(c) as being use as a trade mark;
(d) in a case in which the use is use upon the goods or in physical relation thereto or in an
advertising circular, or other advertisement, issued to the public, as importing a
reference to a person having the right either as registered proprietor or as registered
user to use the trade mark or to goods with which the person is connected in the
course of trade;  or
(e) in a case in which the use is use at or near the place where the services are available
or performed or in an advertising circular or other advertisement issued to the public,
as importing a reference to a person having a right either as registered proprietor or as
registered user to use the trade mark or to services with provision of which the person
is connected in the course of trade.
Section  39.  Infringement of trade mark by breach of certain restriction
(1) Where, by notice upon goods or upon the container of goods, the registered proprietor or a
registered user of a trade mark registered in the Register makes a statement prohibiting the doing of an
act to which this section applies, a person who, be ing the owner for the time being of the goods, does
that act, or authorises it to be done, in relation to th e goods in the course of trade or with a view to a
dealing with the goods in the course of trade, sh all be deemed to infringe the trade mark unless:
(f) at the time when he agreed to buy the goods he acted in good faith without notice that
the statement appeared on the goods;  or
(g) he became the owner of the goods by virtue of a title derived from another person
who had agreed to buy the goods.
(2) The acts to which this section applies are:
(a) the application of the trade mark upon goods after they have suffered alteration to
their state, conditions, get up or packing;IP/C/W/327/Add.1
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(b) in a case in which the trade mark is upon the goods the alteration, partial removal or
partial obliteration of the trade mark, the application of some other trade mark to the
goods or the addition to the goods of other matter in writing or otherwise that is likely
to injure the reputation of the trade mark;  and
(c) in the case in which the trade mark is upon the goods and there is also other matter
upon the goods indicating a connection in the course of trade between the registered
proprietor or registered user and the goods, the removal or obliteration, whether
wholly or partially, of the trade mark unless that other matter is wholly removed or
obliterated.
(3) In this section references in relation to goods to the registered proprietor, to a registered user,
and to the registration of a trade mark shall be construed, respectively, as references to the registered
proprietor of the trade mark, to a registered user of  the trade mark and to the registration of the trade
mark in respect of those goods and the expression "upon" includes, in relation to goods, a reference to
physical relation to the goods.
(d) Industrial Designs Act 1996
Section  32.  Infringement of registered industrial design
(1) Subject to the provisions of this Act, the owne r of a registered industrial design shall have the
exclusive right to make or import for sale or hire, or for use for the purposes of any trade or business,
or to sell, hire or to offer or expose for sale or hire, any article to which the registered industrialdesign has been applied.
(2) Subject to section 30, a person infringes the rights conferred by the registration of an
industrial design if  he, without the licence or consent of the owner of the industrial design, does any
of the following things while the registration is still in force:
(a) applies the industrial design or any fraudulent or obvious imitation of it to any article
in respect of which the industrial design is registered;
(b) imports into Malaysia for sale, or for use for the purposes of any trade or business,
any article to which the industrial design or any fraudulent or obvious imitation of it
has been applied outside Malaysia without the licence or consent of the owner;  or
(c) sells, or offers or keeps for sale, or hires, or offers or keeps for hire, any of the articles
described in paragraphs (a) and (b).
(3) Notwithstanding subsection (1), the right of the owner of a registered industrial design shall
not extend to acts in respect of an article to which the registered industrial design is applied by or with
the consent of the owner after the article has been lawfully imported into or sold in Malaysia.
Section  33.  Infringement proceedings
(1) The owner of a registered industrial design shall have the right to institute legal proceedings
against any person who has infringed or is infringing any of the rights conferred by the registration of
the industrial design.
(2) The owner of a registered industrial design shall have the same right against any person who
has performed acts which make it likely that an infringement will occur.IP/C/W/327/Add.1
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(3) The proceedings mentioned in subsections (1) and (2) may not be instituted after five years
from the act of infringement.
(4) For the purposes of this section, "owner of a registered industrial design" means the registered
owner and includes an assignee, a licensee or th e beneficiary of a compulsory licence granted under
section 27; but if any proceedings are instituted by a person other than the registered owner, it must be
proved that that person had made a prior request to the registered owner to institute proceedings for
the infringement complained of by him and that the registered owner had refused or failed to institute
the proceedings within three months from the receipt of the request, without prejudice however to the
registered owner's right to join in such proceedings.
Section  35.  Remedies for infringement
(1) If the owner of a registered industrial design proves that an infringement has been committed
or is being committed, the Court may award damages or an account of profits and may grant an
injunction to prevent further infringement and any other legal remedies.
(2) If the owner of a registered industrial design proves that acts are being performed which make
it likely that an infringement will occur, that Co urt may grant an injunction to prevent infringement
and any other legal remedies.
(3) The Court may refuse to award damages, or to make an order for an account of profits, in
respect of an infringement, if the defendant satisfies the Court:
(a) that, at the time of the infringement, he was not aware that the industrial design was
registered;  and
(b) that he had, prior to that time, taken all reasonable steps to ascertain whether the
industrial design had been registered.
(e) Layout Designs of Integrated Circuits Act 2000
Section  10
It shall be an infringement of a right holder's right in a protected layout-design for any person
to do or cause any other person to do any of the acts referred to in section 9 (rights of right holder)without the consent of the right holder.
Section  13.  Actions for infringement
(1) Subject to this Act, a right holder may bring an action for an infringement of his rights in a
protected layout-design.
(2) Subject to this act, the relief that the High Court may grant in an action under subsection (1)
includes an injunction and the High Court may impose such terms on the grant of the injunction as the
High Court considers fit.
(3) In addition to the injunction granted under subs ection (2), the High Court may, subject to this
Act, make an order for damages or an account of profits or such other relief as the High Court
considers fit.
(4) If, in an action for an infringement of rights in a protected layout-design, it is established that
an infringement was committed but that at the time of the infringement the defendant was not awareIP/C/W/327/Add.1
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or had no reasonable grounds for suspecting that the act constituting the infringement was an
infringement, the plaintiff shall not be entitled to any damages against the defendant in respect of the
infringement but shall be entitled to an account of profits in respect of the infringement, whether any
other relief is granted or not.
(5) In any action in which damages may be awarded, the High Court may, having regard to all of
the circumstances of the case including the flagrancy of the infringement and any benefit shown to
have accrued to the defendant by reason of the infringement, award additional damages.
(ii) Criminal Action
(a) Copyright Act 1987
Section  41.  Offences
(1) Any person who during the subsistence of copyright in a work or performers' right:
(a) makes for sale or hire any infringing copy;
(b) sells, lets for hire or by way of trade, exposes or offers for sale or hire any infringing
copy;
(c) distributes infringing copies;
(d) possesses, otherwise than for his private and domestic use, any infringing copy;
(e) by way of trade, exhibits in public any infringing copy;
(f) imports into Malaysia, otherwise than for his private and domestic use, an infringing
copy;
(g) makes or has in his possession any contrivance used or intended to be used for the
purposes of making infringing copies;
(h) circumvents or causes the circumvention of any effective technological measures
referred to in subsection (3) of section 36;
(i) removes or alters any electronic rights management information without authority;  or
(j) distributes, imports for distribution or communicates to the public, without authority,
works or copies of works in respect of which electronic rights management
information has been removed or altered without authority,
shall, unless he is able to prove that he had acted in good faith and had no reasonable grounds for
supposing that copyright or performers would or might thereby be infringed, be guilty of an offence
and shall on conviction be liable:
(i) in the case of an offence under paragraphs (a) to (f), to a fine not exceeding
then thousand ringgit for each infringing copy, or to imprisonment for a termnot exceeding five years or to both and for any subsequent offence, to a fine
not exceeding twenty thousand ringgit for each infringing copy or to
imprisonment for a term not exceeding ten years or to both;IP/C/W/327/Add.1
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(ii) in the case of an offence under paragraph (g), to a fine not exceeding twenty
thousand ringgit for each contrivance in respect of which the offence was
committed or to imprisonment for a term not exceeding ten years or to both
and for any subsequent offence to a fine not exceeding forty thousand ringgit
for each contrivance in respect of which the offence was committed or toimprisonment for a term not exceeding twenty years or to both;
(iii) in the case of an offence under paragraphs (h), (i) and (j), to a fine not
exceeding two hundred and fifty thousand ringgit or to imprisonment for a
term not exceeding three years or to both and for any subsequent offence, to a
fine not exceeding five hundred thousand ringgit or to imprisonment for a
term not exceeding five years or to both.
(2) For the purposes of paragraphs (a) to (f) of subsection (1), any person who has in his
possession, custody or control three or more infringing copies of a work or recording in the same form
shall, unless the contrary is proved, be presumed to be in possession of or to import such copies
otherwise than for private or domestic use.
(3) Any person who causes a literary or musical work to be performed in public shall be guilty of
an offence under this subsection unless he is able to prove that he had acted in good faith and had no
reasonable grounds for supposing that copyright would or might thereby by infringed.
(4) Where an offence under this section is committed by a body corporate or by a person who is a
partner in a firm, every director, secretary or manager of the body corporate or, as the case may be,every other partner in the firm shall be deemed to be guilty of the offence unless he proves that the
offence was committed without his consent or connivance and that he exercised all due diligence to
prevent the commission of the offence.
(b) Patents Act 1983
Section  64.  Unauthorised claim or patent
(1) Any person who falsely represents that anything disposed of by him for value is a patented
product or process commits an offence and, subject to  the following provisions of this section, is
liable on conviction to a fine not exceeding fifteen thousand ringgit or to imprisonment for a term not
exceeding two years or to both.
(2) For the purposes of subsection (1), a person who for value disposes of an article having
stamped, engraved or impressed on it or otherwise applied to it the word "patent" or "patented" or
anything expressing or implying that the artilce is a patented product, shall be taken to represent that
the article is a patented product.
(3) Subsection (1) does not apply where the representation is made in respect of a product after
the patent for that product or, as the case may be, the process in question has, expired or been
invalidated and before the end of a period which is reasonably sufficient to enable that person to take
steps to ensure that the representation is not made or does not continue to be made.
(4) In proceedings for an offence under this section, it shall be a defence for any person to prove
that he used due diligence to prevent the commission of the offence.IP/C/W/327/Add.1
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Section  65.  Unauthorised claim that patent has been applied for
(1) Any person who represents that a patent has been applied for in respect of any article
disposed of for value by him and:
(a) no such application has been made,  or
(b) any such application has been refused or withdrawn,
commits an offence and, subject to the following provis ions of this section, is liable on conviction to a
fine not exceeding fifteen thousand ringgit or to im prisonment for a term not exceeding two year or to
both.
(2) Paragraph (b) of subsection (1) does not apply where the representation is made or continues
to be made before the expiry of a period which co mmences with the refusal or withdrawal and which
is reasonably sufficient to enable that person to take steps to ensure that the representation is not made
or does not continue to be made.
(3) For the purposes of subsection (1), a person who for value disposes of an article having
stamped, engraved or impressed on it or otherwise applied to it the words "patent pending", or
anything expressing or implying that a patent has been applied for in respect of the article, shall be
taken to represent that a patent has been applied for in respect of the article.
(4) In any proceedings for an offence under this section, it shall be a defence for any person to
prove that he used due diligence to prevent the commission of the offence.
Section  67.  Offences by corporation
(1) Where an offence under this Act which has been committed by a body corporate is proved to
have been committed with the consent or connivance of, or to be attributable to any neglect on the
part of a director, manager, secretary or other similar officer of the body corporate, or any person who
was purporting to act in any such capacity, he, as well as the body corporate, commits that offence
and is liable to be prosecuted against and punished accordingly as provided by the Act.
(2) Where the affairs of a body corporate are managed by its members, subsection (1) shall apply
in relation to the acts and defaults of a member in connection with his functions of management as ifhe was a director of a body corporate.
(c) Industrial Designs Act 1996
Section  37.  False representation of registration
(1) Any person who falsely represents that anything disposed of by him for value is an article
protected by an industrial design registration commits an offence and shall be liable on conviction to a
fine not exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or
to both.
(2) For the purposes of subsection (1), a person who for value disposes of any article having
stamped, engraved or impressed thereon or otherwise applied thereto the words "registered industrial
design" or any other word or words expressing or implying that the article is one to which a registered
industrial design has been applied, shall be taken to represent that the article is one protected by anindustrial design registration.IP/C/W/327/Add.1
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(3) Subsection (1) does not apply where the representation is made in respect of an industrial
design after the registration in respect of that industrial design has expired or been revoked and before
the end of a period which is reasonably sufficient to en able that person to take steps to ensure that the
representation is not made or does not continue to be made.
(4) In proceedings for an offence under this section, it shall be a defence for any person to prove
that he used due diligence to prevent the commission of the offence.
(5) This section shall have effect in relation to a right to apply for the registration of an industrial
design as they have effect in relation to a registered industrial design, and references to a registered
industrial design shall include references to a right to apply for the registration of an industrial design.
Section  39.  Offences by body corporate
(1) Where an offence under this Act committed by a body corporate is proved to have been
committed with the consent or connivance of, or to be attributable to any neglect on the part of a
director, manager, secretary or other similar offi cer of the body corporate, or any person who was
purporting to act in any such capacity, he, as well as the body corporate, shall be guilty of that offence
and shall be liable to be prosecuted against and punished accordingly as provided by this Act.
(2) Where the affairs of a body corporate are managed by its members, subsection (1) shall apply
in relation to the acts and defaults of a member in connection with his functions of management as ifhe were a director of the body corporate.
(d) Trade Marks Act 1976
Section  81.  Falsely representing a trade mark as registered
(1) A person who makes a representation:
(a) with respect to a mark, not being a registered trade mark, to the effect that it is a
registered trade mark;
(b) with respect to a part of a registered trade mark, not being a part separately registered
on a trade mark, to the effect that it is so registered;
(c) to the effect that a registered trade mark is registered in respect of goods or services
in respect of which it is not registered;  or
(d) to the effect that the registration of a trade mark gives a right to the exclusive use of
the trade mark in circumstances in which, having regard to conditions or limitations
entered on the Register, the registration does not give that right,
is guilty of an offence and is liable, on conviction, to a fine not exceeding five hundred ringgit or to a
term of imprisonment not exceeding two months or to both.
(2) For the purpose of this section, the use in Malaysia in relation to a trade mark of the word
"registered" or of any other word referring whether expressly or impliedly to registration shall be
deemed to import a reference to registration in the Register except:
(a) where the word is used in physical association with other words delineated in
characters at least as large as those in which that word is delineated and indicating
that the reference is to registration as a trade mark under the law of a country outsideIP/C/W/327/Add.1
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Malaysia being a country under the law of which the registration referred to is in fact
in force;
(b) where the word (being a word other than the word "registered") is of itself such as to
indicate that the reference is to registration as mentioned in paragraph (a);  or
(c) where that word is used in relation to a mark registered as a trade mark under the law
of a country outside Malaysia and in relation to goods or services to be exported to
that country.
Criminal procedures and penalties are also pr ovided under the Trade Descriptions Act 1972
where trade marks, patents, industrial designs, geographical indications goods are used as trade
descriptions.  It is a criminal offence under the Trade Descriptions Act 1972 where false trade
descriptions are used on goods in the course of trade or business.
24. Article 43.1 of the TRIPS Agreement requires that judges be authorized to order
production of evidence necessary to substantiate a party's claims where that party has been
unable to obtain such evidence from the opposi ng party.  Please describe how the laws or
regulations of Malaysia provide this authorization, citing to the relevant provisions of law or
regulation.
In pursuance to Order 24, Rules of the High Court 1980, a party may petition the Court for
ordering its opponent to produce any documents within its opponent's control which is pertinent to the
case that is, procedures for discovery and inspection of documents within the control of all the parties
involved in the proceedings.
25. Please describe in detail the all of the civi l remedies that are available to right holders
under the laws of Malaysia, citing to the relevant provisions of law or regulation.
The Judicial Authorities may order the following civil remedies to right holders in cases
involving violations of intellectual property rights:
(a) injunctions
The general jurisdiction to grant injunctions is expressed in Chapter IX of the Specific Relief
Act 1950 and paragraph 6 of the schedule to the Courts of Judicature Act 1964.  In addition, the
jurisdiction to grant injunctions is part of the equitable jurisdiction of the court.  For trade mark
infringement and passing-off cases, the grant of an  injunction is governed by the general provisions
mentioned above.  For copyright infringement cas es, Section 37(1) of the Copyright Act 1987 states
that relief by way of injunction shall be available to the plaintiff.  This is also the case in patent
infringement cases wherein Section 60(1) of the Patents Act 1983 lays down that if an infringement is
committed, the court shall grant an injunction.  Likewise, Section 35(1) of the Industrial Designs Act
1996 echoes the same tenet.
In practice, a plaintiff who has succeeded at trial is granted a permanent injunction as a matter
of course.  In very few cases final injunctions have been refused, and these are limited to situations
where the scale of infringement is trivial or it is pr obable or certain that the infringing act will not be
repeated by the defendant.IP/C/W/327/Add.1
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(b) damages, including recovery of profits, and expenses, including attorney's fees
(i) Damages
Damages are a matter of right.  A successful plaintiff is entitled to compensation for any harm
caused to him which flows directly and naturally from the tortious act.  Damages is a legal remedy
which there is no discretion to refuse in IPR cases, unless the case was wholly quia timet in nature.
In trade mark infringement and passing-off cases, the general principles on damages are relied
upon.
In copyright infringement cases, Section 37(1) of the Copyright Act 1987 makes specific
mention of relief by way of damages or accounts that shall be available to the plaintiff.  Further,
Section 37(2) of the same allows the court to award additional damages for the infringement after
having regard to the circumstances of the case, namely the flagrancy of the infringement and whether
any benefit was shown to have accrued to the defendant by reason of the infringement.  This type of
damages i.e. exemplary and aggravated damages is thought to be awarded for such matters such aninjury to the author 's reputation or feelings, unjust enrichment, existence of scandalous conduct,
deceit and such includes deliberate and calculated copyright infringement.
In patent infringement cases, Section 60(1) of  the Patents Act 1983 states that damages shall
be awarded to the patentee if he has proven an infringement has occurred.
Section 35(1) of the Industrial Designs Act 1996 lays down that a court may award damages
or an account of profits.  However, Section 35(3) of the same provides for a situation where the court
may exercise its discretion to refuse to award damages or to make an order for an account of profits.
If the defendant satisfies the court that firstly at the time of the infringement he was not aware that theindustrial design was registered and secondly he had prior to that time taken all reasonable steps to
ascertain whether the industrial design had been registered, such an award may be refused.
Although the onus is upon the plaintiff to show what damage has been suffered, it is not
necessary to prove any particular damage in order to succeed.  The court will normally assume that
the defendant 's wrongful acts have caused harm and if the quantification of it is difficult, or not
susceptible of mathematical accuracy, a fair or nominal figure for compensation will normally beawarded.  Some heads of damages which are taken into account when quantifying damages are listed
as below:
- loss of sales and profits,
- damage to goodwill or reputation,
- loss of licensing opportunity, and- stress of competition forcing plaintiff to lower his prices.
(ii) Account of profits
The plaintiff has an option whether to claim either damages or profits but he cannot have
both.  The principle of an account is that the defendant is treated as having carried on his infringingactivities on behalf of the IPR owner and is theref ore under a duty to hand over to the IPR owner the
profits made by the infringement.  Generally, an account of profits is an equitable remedy and there is
a discretion to refuse it or to limit it to take into account of such factors such as defendant 's
innocence, inequitable conduct by the plaintiff or delay prejudicial to the defendant.IP/C/W/327/Add.1
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(iii) Costs
Essentially, there are two sets of costs in any ci vil action.  The first is "party to party costs" or
costs as between the parties i.e. costs including fees, charges, disbursements, expenses andremuneration which one party may recover from the other party.  The second is "solicitor and own
client costs" or costs payable to a solicitor by his own client.
The power of the court to award costs is derived from paragraph 15 of the schedule to the
Courts of Judicature Act 1964, and the manner in which it is to exercise this power is set out in
Order 59 rule 2(2) of the Rules of the High Court 1980.  The costs of an incident to an IPR action, as
the costs in any other action, are in the discretion of the court which has full power to determinewhom and to what extent such costs should be paid.
The normal order is for costs to follow the ev ent.  Generally the court follows the ordinary
rule that the unsuccessful party shall pay the costs of the litigation, such costs being taxed upon the
usual scale between party to party.  In a usual case, a party who is awarded costs will still be out ofpocket to the extent that the costs payable to his solicitor exceed the costs he has recovered from his
opponent.  This happens because of the different bases for the assessment of costs which apply as to
recovery between the parties (the party and party basis) and recovery by the solicitor from his client
(the solicitor and client basis).
Only in isolated cases have the successful IPR plaintiff been refused relief  at trial and have
been ordered to pay the costs of the action e.g. defendant offered undertaking at an early stage of the
trial and the plaintiff refuses the offer, trivial case where action commenced without notice to an
innocent purchaser etc.  There are also a handful of instances where the successful defendant been
refused costs e.g. defendant acted dishonestly.
(c) destruction or other disposal of infringing goods and materials/implements for their
production
Delivery up of the infringing goods or destruction on oath is ancillary to the grant of an
injunction.  The power of the court to grant this remedy evolved from the equitable principles:  it is
not ordered because the plaintiff has any sort of proprietary right over the items.  Though the normal
form of the order is for actual destruction or delivery up of the infringing articles, it may be modifiedin certain cases.  For example, in trade mark infringement cases an order for obliteration/erasure of
the infringing mark may be ordered if possible, and in patent infringement cases if the infringing
article can be rendered non-infringing by some alteration or by removal of some part.
An order for delivery up or destruction of materials/implements to produce the infringing
article will not be granted if the materials/implements are not themselves an infringement but may be
used as part of an infringing apparatus.  For in stance, in literary copyright infringement cases the
printing plates may be the subject matter of such an order but it is very unlikely that the courts would
include the actual printing machine itself as part of the order for destruction.
The defendant is not entitled to any compensation for loss caused to him by such destruction
or delivery up and cannot set off the value of goods delivered up against a claim for damages.
(d) any other remedies
The court also has equitable powers to order that the defendant publish corrective statements
and apologies to correct the effect of the infringement.IP/C/W/327/Add.1
Page 76
26. Please describe in detail the provisional procedures and remedies available to right
holders under the laws of Malaysia, citing to the relevant provisions of law and regulation, and
indicate any condition under which a right may avail itself of those procedures and remedies.
Interlocutory Injunctions
1. Jurisdiction
The jurisdiction to grant interlocutory injunctions  is expressed in Section 51(1) of the Specific
Relief Act 1950 and paragraph 6 of the schedule to the Courts of Judicature Act 1950.  In
addition, the jurisdiction to grant injunctions is part of the equitable jurisdiction of the court.
Types of injunctive relief
An application for an interlocutory injunction may be made by any party to a cause or matter at
any stage of the proceeding.  There are several types of such injunctive relief available to an
applicant (either the plaintiff or the defendant) in a civil suit.  These include restrictive/prohibitive
orders where a party is ordered to refrain from doing something, mandatory orders where a party
is required to perform a positive act or quia timet orders where there is a threatened or continuingwrong which is calculated to infringe the plaintiff 's rights.
2. Interlocutory Prohibitory Injunctions
The principles which determine whether the interlocutory injunction should be granted were laid
down by the House of Lords in the leading case of American Cyanamid Co v Ethicon Ltd [1975]AC 396.  There are several questions to be asked:
(1) Is there a serious issue to be tried?  If the answer is no, then the application fails in limine.
Here, all the plaintiff has to show is that there is a valid cause of action at law.  The chances of
success are immaterial.
(2) Once the court has found that there is a serious issue to be tried, it should go on to consider
the adequacy of the respective remedies in damages available for either party.
(a) The court asks whether if the plaintiff were to succeed at trial, would he be
adequately compensated by an award of damages for the loss he would have
sustained as a result of the defendant 's continuing to do what was sought to be
enjoined between the time of the application and the time of the trial.  If damages
would be an adequate remedy and the defendant would be in a financial position to
pay them, no interlocutory injunction should be granted.
(b) If on the other hand damages would not provide adequate remedy for the plaintiff in
the event of his succeeding at trial, the court should then consider whether on the
contrary hypothesis that the defendant were to succeed at trial in establishing his right
to do that which was sought to be enjoined he would be adequately compensated
under the plaintiff 's undertaking as to damages for loss he would have sustained by
being prevented from doing so between the time of the application and the time of
trial.  If damages would be an adequate remedy and the plaintiff would be in afinancial position to pay them, there would be no reason to refuse an interlocutory
injunction.
(3) It is where there is doubt as to the adequacy of the respective remedies in damages available
to either party or to both that the question of  "balance of convenience" arises.  This is a term of the artIP/C/W/327/Add.1
Page 77
which refers to the balancing exercise by the judge in weighing the risks that injustice may result from
his deciding the application one way rather than the other.  The various matters which may need to be
taken into consideration in deciding where the balance lies is not exhaustive, it varies from case to
case.  Some examples would be preservation of the status quo.
(4) There may also be other special factors to be taken into consideration in the particular
circumstances of individual cases, e.g. IPR cases.
This has been accepted by the Malaysian courts.
3. Interlocutory Mandatory Injunctions
An interlocutory mandatory injunction generally requires the respondent to perform a specific
act to undo what he has done in the past.  This remedy is given specific statutory effect by Section 53
of the Specific Relief Act 1950.
Because the award of an interlocutory mandatory injunction will often amount to granting the
applicant the entire or major part of the relief claimed, the courts are far more reluctant to grant aninterlocutory mandatory injunction than it would an interlocutory prohibitory injunction.  The courts
have declared that the discretion to grant an interlocutory mandatory injunction must be only
exercised in exceptional and extremely rare cases.
As such, the standard of proof in such applications are higher than that required for a
prohibitory injunction.  For such an injunction to be awarded, the plaintiff case must be unusually
strong and clear, and the defendant has no arguable defence.
Anton Piller Orders
An Anton Piller Order enables the plaintiff or his representatives to enter the defendant 's
premises to search for, inspect and seize the material, whether documents, articles or other materials,
so that they may be preserved until trial.  The general practice is for the plaintiff 's solicitors to arrange
and supervise the execution of the Order.  The defendant may also be ordered to give information
concerning his activities in relation to a particular matter.  The Anton Piller Order does not allow the
plaintiff or his representatives to enter the defendant 's premises or take his property unless the
defendant consents to these acts.  However, if the defendant  refuses to give his permission, he maybe
liable for contempt.
The main reason for an Anton Piller Order is to enable the plaintiff to discover and preserve
evidence against the defendant in the defendant 's possession and is likely to be destroyed or concealed
by him.  Other reasons would include to identify  and obtain evidence against others who have been
involved with the defendant in the tortious acts , to prevent the defendant from warning others to
destroy or conceal evidence and to prevent further damage to the plaintiff.  The Anton Piller Order is
normally used in conjunction with the order interlocutory remedies.
The principles governing the grant of an Anton Piller Order are as embodied in the case of
Anton Piller KG v Manufacturing Processes Ltd [1976] Ch 55, where the following conditions were
laid down:-
(1) There must be an extremely strong prima facie case.  The Anton Piller Order will not be made
to enable a plaintiff to fish for eviden ce in order to justify mere suspicion.
 
(2) The damage, potential or actual must be very serious for the applicant.
 IP/C/W/327/Add.1
Page 78
(3) There must be clear evidence that the defe ndants have in their possession incriminating
documents or things, and there is a real possibility  that they may destroy such material before any
application inter partes can be made.  Here there is a difference between "a real possibility" and
extravagant fears which seem to afflict all plaintiffs who have complaints of breach of confidence,
breach of copyright or passing-off.
 
(4) The harm likely to be caused by the execution of the Anton Piller Order to the respondent orhis business affairs must not be excessive or out of  proportion to the legitimate object of the order.
Mareva Injunctions
The Mareva injunction is a remedy which is collateral to the main action.  The Mareva
injunction enables the seizure of assets until conclusion of the trial so as to preserve them for the
benefit of the creditor:  but not to give charge in favour of any particular creditor.  It generates
exclusively rights in personam rendering a breach a contempt of court.  Although the Mareva
injunction is most frequently exercised prior to judgement, the court may, in the appropriate
circumstances grant the injunction after judgement in aid of its execution.  The order is addressed tothe defendant but also binds third parties who are affected by it e.g. banks.  In recent times the courts
have expressed a willingness to extend the Mareva injunction to assets outside the jurisdiction.
The courts in Malaysia have accepted the principles enunciated in the case of Third Chandris
Shipping Corporation v Unimarine S.A. [1976] QB 645 whereby to succeed in an application for aMareva injunction, the claimant must satisfy four basic principles:
(1) That he has a valid cause of action over which the court has jurisdiction.
 
(2) That he has a good arguable case.  Here this means that the plaintiff must demonstrate a
likelihood of success, but he does not have to establish a particular degree of likelihood.
 
(3) That the defendant has assets within jurisdiction.  In most cases the plaintiff will not know the
extent of the defendant 's assets, but he may have indications of what assets are available e.g. bank
accounts, land, chattels, company 's goodwill, choses in action.
 
(4) That there is a real risk that the assets may be disposed of or dissipated so that the judgement
cannot be enforced.
Other Forms of Interim Relief
- Sale of perishable property, Order 29 Rule 4 of the Rules of the High Court 1980.
 
- Order for samples to be taken, Order 29 Rule 3 of the Rules of the High Court 1980.
 
- Order for detention, preservation or custody  of property, Order 29 Rule 2 or the Rules
of the High Court 1980.
 
- Early trial, Order 29 Rule 5 of the Rules of the High Court 1980.
J. SPECIAL REQUIREMENTS RELATED TO BORDER MEASURES
27. Please describe in detail the procedures under the laws of Malaysia that provide for
border enforcement at least for trademark counte rfeiting and copyright piracy, identifying the
competent authority and citing to the re levant provisions of law or regulation.IP/C/W/327/Add.1
Page 79
Counterfeit Trade Mark
The competent authority for enforcing border control measures is the Customs Department.
Any person may submit an application to the Registrar of Trade Marks supported by
documents and information relating to the goods stating that:
(1) he is the proprietor of a registered trade mark or an agent of the proprietor having the power
to submit such an application;
 
(2) that, at a time and place specified in the application, goods imported for the purpose of trade;
and
 
(3) he objects to such importation.
(Section 70D(1) Trade Marks Act 1976)
In practice, there is a standard form for this application i.e. Form TM 30.  Upon the grant of
approval, the Registrar of Trade Marks shall also require the applicant to deposit a security.  The
quantum of the security deposit must, in the opinion of the Registrar be sufficient to:
(1) reimburse the government for any liability or expense it is likely to incur as a result of the
seizure of the goods;
 
(2) prevent abuse and to protect the importer;  or
 
(3) pay such compensation as may be ordered by the Court if the applicant fails to take action forinfringement within the retention period.
(Section 70E Trade Marks Act 1976)
If approval is granted, it is valid for only sixty (60) days commencing from the day approval
was given, unless withdrawn before the end of the period by the applicant.  (Section 70D(5) Trade
Marks Act 1976).  Once approval is granted, the Registrar of Trade Marks will immediately take thenecessary measures to notify the Customs of the impending shipment.  The Customs shall then take
the necessary action to seize and detain the identified goods.
As soon as is reasonably practicable after the goods are seized, the Customs shall issue a
notice to the Registrar, importer and applicant of the seizure and the whereabouts of the goods, andthat unless an action for infringement is instituted by the applicant within a specified period from the
date of the notice the goods will be released to the importer.  (Section 70G Trade Marks Act 1976).  If
the applicant requires an extension of time to file the infringement suit, he may request of the same
from the Registrar of Trade Marks.
The Registrar may permit the applicant or the importer to inspect the seized goods and to
remove a sample of the seized goods if he agrees to give the requisite written undertakings, namely
that he will:
(1) return the sample of the seized goods to the Re gistrar at a specified time that is satisfactory to
the Registrar;  and
(2) take reasonable care to prevent damage to the sample.IP/C/W/327/Add.1
Page 80
(Section 70H Trade Marks Act 1976)
If the applicant fails to take action for infringement within the retention period, the importer
or the owner of the goods may apply to the court for an order of compensation against the applicant.
(Section 70K Trade Marks Act 1976).
Pirated Copyright
The competent authority for enforcing border control measures is the Customs Department,
though in copyright cases the Ministry of Domestic Trade and Consumer Affairs and the Police are
also empowered to search for and seize any infringing copies which are prohibited from being
imported into Malaysia. (Section 39(6) Copyright Act 1987).
The owner of copyright in any work, or any person authorised by him may make an
application to the Controller of Copyright to request that during the period specified in the application
copies of the work made outside Malaysia without the consent of the copyright owner shall be treated
as infringing copies.  The application shall:
(1) be in such form as may be prescribed;
 
(2) state that the person named in it is the owner of the copyright;  and
 
(3) be supported by such documents and information, and accompanied by such fee as may be
prescribed.
(Section 39(1A) Copyright Act 1987)
Upon receipt of the application the Controller of  Copyright shall inform the applicant whether
the application has been approved and if so specify the period during which the copies will be treated
as infringing copies.  Upon approval, the Controll er of Copyright shall require the copyright owner to
deposit a security which in the Controller 's opinion is sufficient to reimburse the government for any
liability or expenses which may be incurred in consequence of the detention of the infringing copies
or in consequence of anything done in relation to a copy so detained.
(Section 39(5) Copyright Act 1987)
When seizures are made, the seizing officer shal l forthwith give written notice to the owner of
the infringing copies details of such seizure and the grounds thereof.
(Section 39(7) Copyright Act 1987)
28. Please indicate if border enforcement is available to owners of other forms of intellectual
property and, if so, please describe the procedures and remedies available in relation to each
form of intellectual property, citing the relevant provisions of law.
Border enforcement is also available under the Trade Descriptions Act 1976 where section 17
of the Act provides:
Where a false trade description is applied to any goods outside Malaysia and the false
indication, or one of the false indications, given, or likely to be taken as given, thereby is an indicationof the place of manufacture, production, processing or reconditioning of the goods or any part thereof,
the Minister may make an order prohibiting the import of the goods into Malaysia.IP/C/W/327/Add.1
Page 81
29. Article 58 of the TRIPS Agreement specifies procedures to be followed where the
competent authorities can act ex officio.  Plea se explain whether the competent authorities in
Malaysia are empowered to act ex officio and, if so, please identify the intellectual property
areas subject to ex officio action.
The competent authority in Malaysia for enforcing border control measures is the Customs
Department.  The IPR holders have to take their own initiative to lodge official complaints to the
competent authorities.  Section 70 of the Trade Marks Act 1976 provides for ex-officio action.
K. CRIMINAL PROCEDURES
30. Please describe in detail how the laws of Malaysia implement Article 61 of the TRIPS
Agreement that requires Members to have criminal procedures and penalties, including
imprisonment and/or monetary fines sufficient to act as a deterrent, at least for cases of willfultrademark counterfeiting and copyright infringement  on a commercial scale.  Please cite to the
relevant provisions of law and regulation.
Please refer to the answer in question 23.
31. Article 61 also requires that remedies in a ppropriate cases include the seizure, forfeiture
and destruction of infringing goods and any materials and implements the predominant use of
which has been the commission of the offense.  Please describe the provisions in the laws of
Malaysia that provide for such remedies, a nd describe the circumstances in which those
remedies would be imposed, citing to the relevant provisions of law or regulation.
Remedies including seizure, forfeiture and destruction of infringing goods and any other
materials and implements the predominant use which has been the commission of the offence are
provided for under the relevant following provisions:
(i) The Copyright Act 1987 - sections 45, 46, 47 and 54.
(ii) The Patents Act 1983 - sections 69, 70 and 71.
(iii) The Trade Descriptions Act 1972 - sections 28 and 32.
Generally the courts have jurisdiction to order for destruction of infringing goods.
Delivery up of the infringing goods or destruction on oath is ancillary to the grant of an
injunction.  The power of the court to grant this remedy evolved from the equitable principles:  it is
not ordered because the plaintiff has any sort of proprietary right over the items.  Though the normal
form of the order is for actual destruction or delivery up of the infringing articles, it may be modifiedin certain cases.  For example, in trade mark infringement cases an order for obliteration/erasure of
the infringing mark may be ordered if possible, and in patent infringement cases if the infringing
article can be rendered non-infringing by some alteration or by removal of some part.
An order for delivery up or destruction of materials/implements to produce the infringing
article will not be granted if the materials/implements are not themselves an infringement buy may be
used as part of an infringing apparatus.  For in stance, in literary copyright infringement cases the
printing plates may be the subject matter of such an order but it is very unlikely that the courts would
include the actual printing machine itself as part of the order for destruction.
The defendant is not entitled to any compensation for loss caused to him by such destruction
or delivery up and cannot set off the value of goods delivered up against a claim for damages.IP/C/W/327/Add.1
Page 82
Any other remedies
The court also has equitable powers to order that the defendant publish corrective statements
and apologies to correct the effect of the infringement.
32. Article 61 also indicates that Members may provide for criminal procedures and
penalties in cases of wilful infringement of oth er forms of intellectual property.  Please describe
any provisions of the laws of Malaysia that provide for such procedures and remedies, citing to
the relevant provisions of law or regulation.
The criminal offences under the various IP legislations are deemed to be willful criminal
infringement of which the remedies available are as in the answer to question 23.
L. STATISTICAL QUESTIONS
33. Please provide statistical information related to civil copyright, trademark, geographical
indication, industrial design, patent, integr ated circuit layout-design, and trade secret
enforcement for 2000, including the number of cases filed; injunctions issued; infringing
products seized; infringing equipment seized; cases resolved (including settlement);  and theamount of damages awarded.
We do not have statistical information on civil actions due to the fact civil actions are
instituted by intellectual property owners themselves in various High Courts of Malaysia which
consists of 14 states.
34. Please provide statistical information related  to criminal enforcement in the area of
copyright piracy and trademark infringeme nt for 2000, including the number of raids,
prosecutions, convictions, and the amount of fines and/or jail terms (including whether the fines
were paid and whether the jail term was actually served or was suspended) and any other
information establishing that the criminal syst em operates effectively to deter copyright piracy
and trademark counterfeiting.
1. Statistical information on enforcement in  the area of copyright piracy by the
Enforcement Division, Ministry of Domestic Trade and Consumer Affairs year 2000
Works Complaints
ReceivedNumber of
RaidsProsecutionsValue of
Goods
ConfisticatedConvictions Amount of
fines
FilmsMusicLiterary
Artistic
Computer71
66
0
1
2071
66
0
1
2071
66
0
1
20RM36,108,303
RM  3,803,118
-
RM     650,000
RM     901,477}
}}5
}
}}
RM51,600}
}
}
TOTAL 158 158 158 RM41,462,898 5 RM51,600
However, criminal enforcement of intellectual pr operty rights is also being undertaken by the
Special Copyright Task Force consisting of the Royal Malaysian Police, Royal Customs, National
Film Development Corporation Malaysia, National Censorship Board and Local GovernmentIP/C/W/327/Add.1
Page 83
Authorities.  For the year 2000, the overall statistical information in criminal enforcement are as
follows:
(i) Number of raids:  10,403
(ii) Number of cases:   4,977
(iii) Value of goods confiscated:  RM80,164,592.00
[Note : The above statistical information includes statistical information provided by the
Enforcement Division of the Ministry of Domestic Trade and Consumer Affairs stated in
paragraph 1.]
2. Statistical Information On Criminal Enforcement  In the Area of Trade Marks
Infringement – Year 2000
For the year 2000, the number of actions taken by the Enforcement Division, Ministry of
Domestic Trade and Consumer Affairs were 1645 cases of which the value of goods confisticated
amounted to RM23,646,452.65.  The number of cases brought before the Courts were 13 and the
amount of fines charged by the Courts amounted to RM 102,100.00 and for the cases that have been
compounded by the authority, the collection amounted to RM629,890.00.
UNITED STATES
FURTHER QUESTIONS
1. Does an exclusive licensee to a copyrighted wo rk have standing to assert its intellectual
property right?
Section 26 of  the Copyright Act 1987 confers the similar exclusive rights to the licensee as
vested to the licensor as provide for under section 10.  However, under section 27, the licensingagreements have to be made in writing.
2. Do judicial authorities have the authority to sanction a party to a proceeding that does
not produce evidence that lies within its control?
In pursuance to Order 24, Rules of the High Court 1980, a party may petition the Court for
ordering its opponent to produce any documents within its opponent 's control which is pertinent to the
case that is, procedures for discovery and inspection of documents within the control of all the partiesinvolved in the proceedings.
3. Do the intellectual property related laws of Malaysia provide for pre-established or
statutory damages for infringement of an intellectual property right?  If so, please describe the
amount of damages and the circumstances under which pre-established damages can beordered.
Pre-established or statutory damages for infringement of an intellectual property right can be
ordered by the court.  The jurisdiction to grant interlocutory injunction is expressed in
section 51(1) of the Specific Relief Act 1950 and para 6 of the schedule to the Courts of
Judicature Act 1950.
The interlocutory injunctions are as follows:IP/C/W/327/Add.1
Page 84
(1) Interlocutory Prohibitory Injunctions;  and
 
(2) Interlocutory Mandatory Injunctions:
(a) Anton Pillar Order
(b) Mareva Injunction
2. As to the amount of damages, it is for the court to decide in view of the circumstances of the
infringement.
4. Does the Customs Department and/or the Ministry of Domestic Trade and Consumer
Affairs have the authority to act in an ex offici o capacity with regard to works made without the
consent of the copyright owner?
The intellectual property right holders have to take their own initiative to lodge official
complaints to the competent authorities.  Section 39 of the Copyright Act 1987 provides for ex officio
action.
__________