RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/327
26 November 2001
(01-6032)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from Malaysia to questions posed by Canada and Switzerland
By means of a communication from the Permanent Mission of Malaysia dated
23 November 2001, the Secretariat has received the following responses to questions posed byCanada and Switzerland, as circulated in documents IP/C/W/314 and 315, respectively.
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CANADA
1. Please describe how the enforcement obligations (Articles 41-61 of the TRIPS Agreement and
throughout) have been implemented.
The courts with jurisdiction over the enforcement of intellectual property rights ("IPR") are
the High Courts of Malaysia.  The enforcement of IPR is laid down in various intellectual propertyand other related legislations, mainly:
a) Patents Act 1983 and its subsidiary legislations
b) Trade Marks Act 1976 and its subsidiary legislations
c) Copyright Act 1987 and its subsidiary legislations
d) Industrial Designs Act 1996 and its subsidiary legislations
e) Geographical Indications Act 2000 and its subsidiary legislations
f) Layout Designs of Integrated Circuits Act 2000
g) Trade Descriptions Act 1972
h) Optical Disc Act 2000 and its subsidiary legislations
The enforcement provisions under the various IP legislation of Malaysia are of judicial
proceedings in nature.  Both civil and criminal remedies are available under the various legislations.
The criminal remedies include substantial fines and imprisonment, and seizure of infringing goods
(particularly for goods infringing copyright) and forfeiture of counterfeit goods (in trademark
infringement).  Civil remedies include injunction, damages, account of profits and other relief or otherreasonable disposition of infringing goods (expressly stated for goods infringing copyright).IP/C/W/327
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The Courts may also order the impounding of contrivances that could be used for the making
of copies of works or sound recordings, and the documents, accounts or business papers relating to
such copies.
Owners of patent and industrial designs can also institute proceedings against any person who
performs an act, which makes it likely that his right will be infringed.  An order for inspection ofanything in or any vehicle, vessel, aircraft, building or premise can also be obtained for purposes of
enforcing his right.
The enforcement in the current IP legislation for Articles 47, 48 and 49, are either not
expressly stated, but are stated in general terms.  The civil procedure instituted in the Courts for the
enforcement of IP rights is the same as any other civil procedure, e.g., the order for the production ofdocuments.
2. What protection does your copyright legislation afford to “foreign works”?
National treatment is provided in accordance to  Berne Convention which Malaysia acceded to
on 1 October 1990.
SWITZERLAND
A. 
TRADEMARKS
1. Please explain how your legislation implements  Article 62.2 of the TRIPS Agreement.  Please
indicate how long it takes on average to register a trademark. Please cite the relevant provisions ofyour law.
In Malaysia the rights of a trademark holder subsist through "use" under the common law.In all legal proceedings relating to a registered trademark the fact that a person is registered as
proprietor of the trademark shall be prima facie  evidence of the validity of the original registration of
the trademark and off all subsequent assignments and transmissions thereof as provided for under
section 36 of the Trade Marks Act 1976.
The original registration of the trademark under this Act shall, after the expiration of seven
years from the date thereof, be taken to be valid in all respects unless it is shown:
a) that the original registration was obtained by fraud;
b) that the trademark offends against section 14; or
c) that the trademark was not, at the commencement of the proceedings, distinctive of
the goods or services of the registered proprietor.
Under normal circumstances, the registration may take about 18 months from the date of
filing.
2. Please explain in detail how Malaysia protec ts well-known trademarks and cite the relevant
provisions of 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 trade mark is entitled to restrainIP/C/W/327
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by injunction the use in Malaysia in the course of trade and without the proprietor's consent of the
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.
B. PATENTS
3. Does your legislation grant patent protection for inventions relating to products and
processes in all fields of technology?  Please indicate details regarding the protection for micro-
organisms and non-biological and microbiological processes.  Are there any exceptions?  If so,
please explain what these exceptions are and how they comply with Article 27 of the TRIPS
Agreement.  How are plant varieties protected in your law?
Malaysia's legislation grants protection for inventions relating to products and processes in all
fields of technology as provided under Secti ons 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 to
public 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 micro-organism, micro- biological processes
and the products of such micro-organism pro cesses 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.
4. Does your legislation, in accordance with Article 27.1 in combination with Article 31 of the
TRIPS Agreement, consider impor tation as "working" a patent (and therefore preclude compulsory
licensing, if a product is being imported)?
Our Patents Law complies with Articles 27.1 and 31 of the TRIPS Agreement.  However,
importation is not being considered as "working" a patent.  It is provided under Section 52(a) of the
Patents Act 1983.
5. Does your legislation make the granting of a compulsory license subject to all the conditions
enumerated in Article 31 of the TRIPS Agreement?  Please cite the relevant provisions of 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.
6. Please indicate the term of protection granted to patents according to your law.
The term of protection for patents is 20 years from the date of filing of an application.IP/C/W/327
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7. Does your legislation provide for the principle of the reversal of burden of proof in a process
patent litigation?  Please cite the relevant provisions of law.
The principle of the reversal of burden of proof in a process patent litigation is not
specifically provided for under the Patents Act 1983.  Nevertheless this principle is being laid downunder Orders 38, 39 and 40 of the Rules of the High Court 1980 on the issue of the general principle
of burden of proof in all litigation cases.
C. P
ROTECTION OF UNDISCLOSED INFORMATION
8. Please explain in detail if your legislation ensures that undisclosed test or other data
submitted by an applicant to the responsible State agency in the procedure for market authorisation of
a pharmaceutical or of an agricultural chemical product is protected against disclosure and againstunfair commercial use by a competitor, for example by prohibiting a second applicant from relying
on, or from referring to the original data of the first applicant, when applying subsequently for market
authorisation for a similar product.  Does your legislation provide for exceptions to this? If yes, under
what conditions would such exceptions apply?  Does your legislation set a specific term of protection
for undisclosed test or other data of the first applicant?
Generally, the protection of undisclosed information in Malaysia is laid down under the rules
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.
D. E
NFORCEMENT
9. Please indicate remedies provided by your legislation which constitute effective deterrents to
infringements of intellectual property rights.
Criminal procedures and penalties in respect of infringements of IPR are available in the
trademarks law, copyright law, patents law, industrial designs law and geographical indications law.With respect to trademark infringement, criminal procedures and penalties are available where
trademarks 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.  This is
commonly known as fake or counterfeit products.
Matters pertaining to copyright are governed under the Copyright Act 1987.  Under the Act, it
is a criminal offence for any person who during the subsistence of copyright: under Section 41:
a) makes for sale or hire any infringing copy;
b) sells, lets for hire or by way of trade, expose or offers for sale or hire any infringing
copy;
c) distributes infringing copy;
d) possesses, otherwise than for his private and domestic use, any infringing copy;
e) by way of trade, exhibits in public any infringing copy;IP/C/W/327
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f) imports into Malaysia, otherwise than for his private and domestic use, an infringing
copy; or
g) makes or has in his possession any contrivance used or intended to be used for the
purpose of making infringing copies.
It is also a criminal offence for any person who causes an unauthorised literary or musical
work to be performed in the public.
Other than criminal remedies mentioned above, Malaysia's common law rules provide the
following civil remedies that is:
a) injunctions;
b) claim for damages;
c) account of profits;
d) costs;
e) destruction or other disposal of infringing goods and contrivances;
f) any other equitable remedies.
10. Please explain in detail how Article 50 of th e TRIPS Agreement is implemented in your law,
citing the relevant provisions. Please specify any conditions required by your law, if any, that need tobe fulfilled in order for a right holder to avail itself of provisional measures.
Under Malaysia's common law rule, effective use of interlocutory measures may require that
action be taken without giving prior notice to the other side.  The courts have powers to adopt
provisional measures inaudita altera parte,  i.e. without prior hearing of the other side in appropriate
cases.  These are cases of utmost urgency or where any delay is likely to cause irreparable harm to the
IPR holder, or where there is a high risk of evidence being destroyed or funds being dissipated tothwart a judgement.  The above mentioned provisional remedies i.e. interlocutory injunctions, Mareva
injunctions and Anton Piller Orders may all be made inaudita altera parte .  Indeed, for Mareva
injunctions and Anton Piller Orders, it is the norm that such applications be made on an ex parte
basis.
Pursuant to Order 24, Rules of  the High Court 1980, a party may petition the Court to order
its opponent to produce any documents within its opponent's control which are pertinent to the case
that is, procedures for discovery and inspection of documents within the control of all the parties
involved in the proceedings.
11. Please describe any new initiatives that are planned to improve enforcement of intellectual
property rights in your country, particularly initiatives related to criminal enforcement.
Malaysia through the Domestic Trade and Consumer Affairs Ministry has undertaken several
pro-active actions against copyright violators under the various Laws other than the Copyright Act1987, that is:
a) Film (Censorship) Act 1952;
b) The Printing Press & Publication Act 1984;IP/C/W/327
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c) Film Development Act 1984;
d) Price Control (Labelling by Manufacturers, Importers, Producers and Wholesalers)
Order 1980;
e) Customs Act 1967;
f) Trade Descriptions Act 1972; and
g) The Local Authorities By-Laws.
A Special Copyright Task Force comprising the relevant enforcement agencies was set up.
The Government is committed in its effort to combat piracy to ensure a continuous growth of the
economy and to ensure the success of our Multimedia Super Corridor (MSC).
Since February 2000 the Minister of Home Affairs has appointed 192 Enforcement Officers
of the Ministry of Domestic Trade and Consumer Affairs as Film Inspectors to carry out duties under
the Film (Censorship Act) 1952, with the view of assisting in the Anti-Piracy Operations and to
facilitate investigation.
The Ministry of Home Affairs is in the process of amending several provisions of its Film
(Censorship) Act 1952.  Some of the provisions c onsidered are to give powers of arrest without
warrant on those caught distributing illegal films, and to increase the maximum penalty of offences
from RM 5,000.00 to RM 50,000.000.
In order to curb piracy in the form of Optical Discs at source the Government approved to the
introduction of a new legislature i.e. The Optical Discs Act 2000 which was passed by Parliament in
July 2000 and is in force since 15 September 2000.
There are 4 main objectives under this Act:-
a) to establish new regulations to license manufacturers of copyrighted products for
trade in the form of optical disc or any other forms;
b) to prevent the manufacturing of infringing products meant for trade in the form of
optical disc or any other forms;
c) to formulate enforcement powers and to introduce relevant penalties of offences of (a)
and (b) above; and
d) to promote ethical trade practices as per paragraphs (a) and (b) above.
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