Question 1
What is Licence Framework under Digital Signature Act 1997?
Answer 1
The emergence of the Digital Signature arose out of the need to ensure secured connection between two transactional parties. Security and commitment are key issues for commercial online transactions, as the Internet is an open network prone to problems such as identity, legal commitment, third party interference and manipulation of information.
The enactment of the Digital Signature Act 1997 which came into effect on 1st Oct 1998, introduces and implements the usage of Digital Certificate for Internet based commercial transactions. The Malaysian Communications and Multimedia Commission took over the role of the Controller of Certification Authorities on 1st November 2001 and is now empowered to exercise, discharge and perform the duties, powers, functions conferred on it under the Digital Signature Act 1997. The Act primarily provides for the licensing and regulation of Certification Authorities (CA).
Licensing Framework
The Digital Signature Act 1997 and Digital Signature Regulation 1998 provide the licensing framework for the provision of digital signatures in Malaysia including the type of services, the qualification requirements, how to apply and the respected fees.
a) Licensed Certification Authority;
b) Certificate of Recognition for a Repository;
c) Certificate of Recognition for a Date/Time Stamp Service; and
d) Recognition of Foreign Certification Authority
Question 2
What is the function of Licensed Certification Authority?
Answer 2
The function of a licensed certification authority is to issue to a subscriber upon application and upon satisfaction of the licensed certification authority’s requirements as to the identity of the subscriber to be listed in the certificate and upon payment of the prescribed fees and charges.
Licensed certification authority, before issuing any certificate, must take all reasonable measures to check for proper identification of the subscriber to be listed in the certificate.
The licensing of certification authorities is obligatory under the Digital Signature Act 1997. The MCMC issues two stages of licences for certification authorities:
a) The establishment stage; and
b) The operation stage.
The MCMC issues the establishment stage licence for a period of not exceeding one year. During the period, a person has to fulfil all licensing requirements and may apply for the operation stage.
A person is only allowed to carry on or operate as a licensed certification authorities until that person has been issued with the operation stage of the licence.
Question 3
Who can apply for Licensed Certification Authority?
Answer 3
A person intending to carry on or operate as a certification authority must satisfy the following requirements:
§ It is a body corporate incorporated in Malaysia or a partnership within the meaning of the Partnership Act 1961;
§ It maintains a registered office in Malaysia;
§ It has a working capital reasonably sufficient, according to the requirements of the Commission, to enable it to carry on or operate as a certification authority;
§ It files with the Commission a suitable guarantee;
§ It uses a trustworthy system for the generation and management of key pairs and certificates;
§ It uses an approved digital signature scheme for the generation of key pairs and for the creation and verification of digital signatures;
§ It has an operating procedure that includes a certification practice statement, the measures to be taken to check the identity of subscribers to be listed in certificates, and the repositories and date/time stamp services to be used;
§ It employs as operative personnel only persons who:
a) have not been convicted within the past 15 years of an offence involving fraud, false statement or deception; and
b) have demonstrated knowledge and proficiency in following the requirements of the Act and its Regulations;
(i) it complies with the licensing, standards and technical requirements under the Act and its Regulation; and
(ii) it complies with such other requirement as the Commission thinks fit.
Question 4
What are the details required to apply for Licensed Certification Authority?
Answer 4
To apply for Licensed Certification Authority:
a) A person fills in Form 1;
b) A person must provide the following information for the establishment stage:
(i) the particular of the applicant
(ii) the anticipated operational costs and proposed financing;
(iii) details of the personnel to be employed and their qualifications, if available;
(iv) the proposed operating procedure; and
(v) the services to be provided and the fees and charges to be imposed thereof.
c) A person must provide the following information for the operation stage:
(i) all valid information submitted for the establishment stage;
(ii) all new information and all the changes to the information submitted for the establishment stage, if any;
(iii) a suitable guarantee; and
(iv) a report from a qualified auditor certifying that the prescribed licensing, standards and technical requirements have been satisfied.
d) The prescribed fee; and
e) Such other information or documents as the Commission may require.
Question 5
What is Certificate of Recognition for a Repository under Digital Signature Act 1997?
Answer 5
The repository service is important and critical to the operation of an open Public Key Infrastructure. The development of robust and easily accessible repository service is a crucial mechanism to maintain the quality of certification authority services. Typically, a repository will contain the licensed certification authorities’ disclosure records, certificates, the most recent Certificate Revocation List (CRL), other suspension or revocation information and other information about certification practices.
Question 6
Who can apply for Certificate of Recognition for a Repository?
Answer 6
A person intending to carry on or operate as a repository must satisfy the following requirements:
§ It is a body corporate incorporated in Malaysia or a partnership within the meaning of the Partnership Act 1961 [Act 135];
§ It maintains a registered office in Malaysia;
§ It has a working capital reasonably sufficient, according to the requirements of the Commission, to enable it to conduct business as a Repository;
§ It employs as operative personnel only persons who:
a) have not been convicted within the past 15 years of an offence involving fraud, false statement or deception; and
b) have demonstrated knowledge and proficiency in following the requirements of the Act and its Regulations;
§ The repository includes a date base that is capable of containing:
a) Certification Authority disclosure records for licensed Certification Authority;
b) Certificates to be published in the repository;
c) Notices of suspended or revoked certificates to be published by a licensed certification authority or any person suspending or revoking certificates;
d) Notice of termination of suspension of certificates to be published by a licensed certification authority or any person suspending certificates;
e) Advisory statements, written defences thereto and decisions made by the Commission thereon to be published by the Commission under the Act and its Regulations; and
f) Such other information as the Commission thinks fit.
§ It operates by means of a trustworthy system;
§ The repository contains no significant amount of information that the Commission finds is known or likely to be untrue, in accurate or not reasonably reliable;
§ The repository contains certificates published by certification authorities that are required to conform to rules of practice that are similar to or more stringent that the requirement of the Act and its Regulations;
§ It keeps and maintains an archive of certificates that have been suspended or revoked, or that have been expired at least the preceding ten years;
§ It complies with the certification, standards and technical requirements under the Act and its Regulation; and
§ It complies with such other requirement as the Commission thinks fit.
Question 7
What are the details required to apply for Certification of Recognition for Repositories?
Answer 7
To apply for Certification of Recognition for Repositories:
a) A person fills in Form 1;
b) For the establishment stage, a person must provide the following information:
(i) the particular of the applicant
(ii) the anticipated operational costs and proposed financing;
(iii) details of the personnel to be employed and their qualifications, if available;
(iv) the proposed operating procedure; and
(v) the services to be provided and the fees and charges to be imposed thereof.
c) For the operation stage, a person must provide the following information:
(i) all valid information submitted for the establishment stage;
(ii) all new information and all the changes to the information submitted for the establishment stage, if any; and
(iii) a report from a qualified auditor certifying that the prescribed certification, standards and technical requirements have been satisfied.
d) The prescribed fee; and
e) Such other information or documents as the Commission may require.
Question 8
What is Certificate of Recognition for a Date/Time Stamp Service under Digital Signature Act 1997?
Answer 8
A way of vouching the exact time when a computer record (messages, document, or even digital signatures) was created or last modified is by using a digital date/time stamping system. A digital date/time stamp is basically a cryptographically inforgeable digital declaration which can be used as evidence of the date and time a computer record was created. The date/time stamp can be attached to a digital signature, message or other document if required by any written law.
Question 9
Who can apply for Certificate of Recognition for a Date/Time Stamp Service?
Answer 9
A person intending to carry on or operate as a repository must satisfy the following requirements:
§ It is a body corporate incorporated in Malaysia or a partnership within the meaning of the Partnership Act 1961 [Act 135];
§ It maintains a registered office in Malaysia;
§ It has a working capital reasonably sufficient, according to the requirements of the Commission, to enable it to conduct business as a Repository;
§ It employs as operative personnel only persons who:
a) have not been convicted within the past 15 years of an offence involving fraud, false statement or deception; and
b) have demonstrated knowledge and proficiency in following the requirements of the Act and its Regulations;
§ It operates by means of a trustworthy system;
§ It uses a reasonably secure and tamper-proof mechanism as it’s time-stamping device;
§ It keeps and maintains an archive of documents that have been time-stamped, irrespective that the contents of the document itself are not disclosed, within at least the preceding ten years;
§ It complies with the certification, standards and technical requirements under the Act and its Regulation; and
§ It complies with such other requirement as the Commission thinks fit.
Question 10
What are the details required to apply for Certificate of Recognition for a Date/Time Stamp Service?
Answer 10
To apply for Certificate of Recognition for a Date/Time Stamp Service:
a) A person fills in Form 1;
b) For the establishment stage, a person must provide the following information:
(i) the particular of the applicant
(ii) the anticipated operational costs and proposed financing;
(iii) details of the personnel to be employed and their qualifications, if available;
(iv) the proposed operating procedure; and
(v) the services to be provided and the fees and charges to be imposed thereof.
c) For the operation stage, a person must provide the following information:
(i) all valid information submitted for the establishment stage;
(ii) all new information and all the changes to the information submitted for the establishment stage, if any; and
(iii) a report from a qualified auditor certifying that the prescribed certification, standards and technical requirements have been satisfied.
d) The prescribed fee; and
e) Such other information or documents as the Commission may require.
Question 11
What is Recognition of Foreign Certification Authorities under Digital Signature Act 1997?
Answer 11
The Commission may recognise by order of published in the Gazette, certification authorities licensed or otherwise authorized by governmental entities outside Malaysia. A certificate issued by recognised foreign certification authorities has the same effect as a certificate issued by a licensed certification authority of Malaysia.
Question 12
What are the criteria to apply for Recognition of Foreign Certifications Authorities?
Answer 12
a) A foreign certification authority is eligible for recognition if an international treaty, agreement or convention concerning the recognition of its certificates has been concluded to which Malaysia is a party;
b) It must le licensed or otherwise authorized by the relevant governmental entity in that country to carry on or operate as a certification authority in that country;
c) The certificate issued by the foreign certification authority demonstrates a level of security equal to or more stringent than the level of security of a certificates issued by a licensed certification authority in Malaysia;
d) It has established a local agent for service of process in Malaysia;
e) It complies with the standards and technical requirements under the Act and its Regulations; and
f) It complies with such other requirements as the Commission thinks fit.
Question 13
What are the details required to apply for Recognition of Foreign Certification Authorities?
Answer 13
A foreign certification authority must be apply:
a) In writing to the Commission for the recognition
b) The application above must be accompanied by the following documents:
(i) proof that the criteria for recognition of foreign certification authorities have been satisfied, including a report from a qualified auditor certifying that the prescribed standards and technical requirements have been satisfied.
c) The prescribed fee; and
d) Such other information or document as the Commission may require.
Wednesday
Patent Assignment And Power of Attorney
Question 1
We write to inform you that an assignment from a UK company, registered in the British Virgin Island (BVI) is to be recorded.
Please provide us with the documents required by the Malaysian Patent Office to record the assignment to the UK company.
Answer 1
We would require to file two assignments to record the change at the Intellectual Property Corporation of Malaysia (MyIPO) as we note that there are two different addresses for the UK Company who is the current Applicant for Malaysia-Patent Applications.
We enclose herewith two separate Deed of Assignment for the said matter. Kindly let us have the original copy or a certified true copy for us to file the said recordal at MyIPO .
We would require an original Power of Attorney (POA) to enable us to act for your clients before the MyIPO. We attach herewith a blank copy of the POA for your onward transmission to your clients. Please ensure that the signatory is an authorised person of the applicant and his name and designation are stated under his signature.
Question 2
We have a couple of queries regarding the Power of Attorney. I believe that you already have a power of attorney for the assignors, so we shall obtain a power for the assignee only, unless you inform us to the contrary.
Furthermore, the Power of Attorney template appears to be suitable for a maximum of one patent application. Should we therefore prepare seven Powers of Attorney (one per application) or can we list all seven applications on one Power of Attorney?
Answer 2
It is correct that we only require the Power of Attorney (POA) for the Assignee only. One POA is sufficient and all seven applications is to be listed in the said POA.
We write to inform you that an assignment from a UK company, registered in the British Virgin Island (BVI) is to be recorded.
Please provide us with the documents required by the Malaysian Patent Office to record the assignment to the UK company.
Answer 1
We would require to file two assignments to record the change at the Intellectual Property Corporation of Malaysia (MyIPO) as we note that there are two different addresses for the UK Company who is the current Applicant for Malaysia-Patent Applications.
We enclose herewith two separate Deed of Assignment for the said matter. Kindly let us have the original copy or a certified true copy for us to file the said recordal at MyIPO .
We would require an original Power of Attorney (POA) to enable us to act for your clients before the MyIPO. We attach herewith a blank copy of the POA for your onward transmission to your clients. Please ensure that the signatory is an authorised person of the applicant and his name and designation are stated under his signature.
Question 2
We have a couple of queries regarding the Power of Attorney. I believe that you already have a power of attorney for the assignors, so we shall obtain a power for the assignee only, unless you inform us to the contrary.
Furthermore, the Power of Attorney template appears to be suitable for a maximum of one patent application. Should we therefore prepare seven Powers of Attorney (one per application) or can we list all seven applications on one Power of Attorney?
Answer 2
It is correct that we only require the Power of Attorney (POA) for the Assignee only. One POA is sufficient and all seven applications is to be listed in the said POA.
Tuesday
Well-Known Marks In India
Question 1
What are the requirements of the well-known trade mark in India?
Answer 1
The well-known trade mark requirements in India;
· The mark must be known or recognized and known by a relevant section of the public and need not be well known to the public at large.
· The mark need not be a registered mark, nor does it have to be a mark in use nor is it necessary for an application of the mark to be filed in India.
· The mark must be well known in India, but need not be well known on an international scale.
Question 2
What are the factors to be taken into account in deciding whether a mark is well-known in India?
Answer 2
The factors to be taken into account in deciding whether a mark is well-known in India;
· The knowledge and / or recognition of the trade mark in the relevant section of the public, including the knowledge obtained as a result of promotion of the trade mark in India.
· The duration, extent and geographical area of any use of the mark.
· The duration, extent and geographical area of any promotion of the mark including advertising or publicity and the presentation, at fairs or exhibition, of the goods and services to which the mark is applied.
· Records of successful enforcement of rights in the mark particularly in extent to which the mark was recognized as well known by competent authorities.
Question 3
What are the evidence to prove use of the mark in India?
Answer 3
The evidence to prove use of the mark in India or otherwise includes;
· Sales figures pertaining to the use of the mark in India.
· Sales figures pertaining to the use of the mark in major countries where there are large sections of the Indian population.
· Records of successful enforcement of the mark’s rights in the world, in particular anywhere in the world where the mark may have be considered to be well known or famous.
What are the requirements of the well-known trade mark in India?
Answer 1
The well-known trade mark requirements in India;
· The mark must be known or recognized and known by a relevant section of the public and need not be well known to the public at large.
· The mark need not be a registered mark, nor does it have to be a mark in use nor is it necessary for an application of the mark to be filed in India.
· The mark must be well known in India, but need not be well known on an international scale.
Question 2
What are the factors to be taken into account in deciding whether a mark is well-known in India?
Answer 2
The factors to be taken into account in deciding whether a mark is well-known in India;
· The knowledge and / or recognition of the trade mark in the relevant section of the public, including the knowledge obtained as a result of promotion of the trade mark in India.
· The duration, extent and geographical area of any use of the mark.
· The duration, extent and geographical area of any promotion of the mark including advertising or publicity and the presentation, at fairs or exhibition, of the goods and services to which the mark is applied.
· Records of successful enforcement of rights in the mark particularly in extent to which the mark was recognized as well known by competent authorities.
Question 3
What are the evidence to prove use of the mark in India?
Answer 3
The evidence to prove use of the mark in India or otherwise includes;
· Sales figures pertaining to the use of the mark in India.
· Sales figures pertaining to the use of the mark in major countries where there are large sections of the Indian population.
· Records of successful enforcement of the mark’s rights in the world, in particular anywhere in the world where the mark may have be considered to be well known or famous.
Well-Known Marks In Vietnam
Question 1
What constitutes a well-known mark in Vietnam?
Answer 1
A well-known mark is defined to be;
· A mark that is widely known by consumers throughout the country.
· The mark must have sufficient reputation in Vietnam and not necessarily be well known on an international scale.
Question 2
What are the criteria of a well-known mark in Vietnam?
Answer 2
The criteria of a well-known mark in Vietnam;
· The number of the related consumers who are aware of the mark through purchase or use of the goods / services bearing the mark or through advertising.
· The territorial scope of circulation of the goods /services bearing the mark.
· The turnover of the sale or supply of the goods or services bearing the mark or the volume of the goods sold or the services supplied.
· The period of continuous use of the mark.
· The widespread goodwill of the goods /services bearing the mark.
· The number of countries in which the mark is protected and recognized as a well known mark.
· The value of the mark based on the value paid for a licensing agreement, assignment or the value of investment capital contribution in respect of the mark.
What constitutes a well-known mark in Vietnam?
Answer 1
A well-known mark is defined to be;
· A mark that is widely known by consumers throughout the country.
· The mark must have sufficient reputation in Vietnam and not necessarily be well known on an international scale.
Question 2
What are the criteria of a well-known mark in Vietnam?
Answer 2
The criteria of a well-known mark in Vietnam;
· The number of the related consumers who are aware of the mark through purchase or use of the goods / services bearing the mark or through advertising.
· The territorial scope of circulation of the goods /services bearing the mark.
· The turnover of the sale or supply of the goods or services bearing the mark or the volume of the goods sold or the services supplied.
· The period of continuous use of the mark.
· The widespread goodwill of the goods /services bearing the mark.
· The number of countries in which the mark is protected and recognized as a well known mark.
· The value of the mark based on the value paid for a licensing agreement, assignment or the value of investment capital contribution in respect of the mark.
Well-Known Marks In Malaysia
Question 1
What constitutes a well-known mark in Malaysia?
Answer 1
A well-known mark must be;
· The mark is well known in Malaysia.
· A mark registered or unregistered.
· The registered owner belongs to an individual who is a member of a country party to the Paris Convention regardless of whether he carries on business, or has any goodwill, in Malaysia.
However, the protection for well known trade marks is only invoked when the conflicting mark uses the same goods or services as that of the well known mark.
Question 2
What are the requirements and types of evidence to qualify a mark as a well-known mark in Malaysia?
Answer 2
The requirements and types of evidence to qualify a mark as a well known mark includes;
· The degree of knowledge or recognition of the mark in the relevant sector of the public.
· The duration, extent and geographical area of any use of the mark.
· The duration, extent and geographical area of any promotion of the mark including advertising or publicity and the presentation, at fairs or exhibition, of the goods and services to which the mark is applied.
· The duration and geographical area of any registrations, or any application for registration of the mark to the extent that they reflect use or recognition to the mark.
· The record of successful enforcement of rights in the mark particularly in extent to which the mark was recognized as well known by competent authorities.
· The value associated with the mark.
Question 3
What is the scope of protection for a well-known mark in Malaysia?
Answer 3
The scope of protection for a well-known mark in Malaysia;
The registration of a mark will not be allowed if: -
· It is identical or confusingly similar or constitutes a translation of a mark which is considered by the relevant authority in Malaysia to be well known in Malaysia, whether or not the mark is registered and used for identical or similar goods or services.
· It is identical or confusingly similar or constitutes a translation of a mark which is considered by the relevant authority in Malaysia to be well known based on the above stated requirements, which is registered in Malaysia, in respect to similar or different goods / services registered for; so long as the use of the mark indicates a connection between those goods and services with the proprietor of the registered well known mark, provided that the interests of the proprietor will be compromised by the use of the conflicting mark.
Question 4
What are the benefits conferred to the registered owner of a well-known mark in Malaysia?
Answer 4
The benefits conferred to the registered owner of a well-known mark;
· In Malaysia, there is no special or separate filing for well known marks. Trade mark applications for well known marks must be go through the standard trade mark examination process.
· In the event an objection is raised during the Registry’s examination of the mark or an opposition issue is raised by a third party, the Applicant may defend their mark by relying on the requirements to qualify a mark as a well known mark as stated above.
· A registered owner of the well known mark is entitled to restrain the use of the mark which were used in the course of trade in Malaysia without the registered owner’s consent and the conflicting mark resembles essential parts or is identical to the well known mark, in respect of the same goods / services, where the use is likely to cause confusion.
Question 5
What are the options of defensive trade mark protection in Malaysia?
Answer 5
The options of defensive trade mark protection;
· A well known mark may be registered as a defensive mark in all classes of goods / services in addition to the classes of goods or services in which the well known mark is actually in use.
· To register for a defensive mark in respect of any goods and services, the registered owner must have an existing registration of the mark.
· A defensive mark must have an established reputation for certain goods and services for which the mark is already registered wherein the registered owner of the mark must show that the public would incorrectly construe that the mark used in relation to other goods and services, indicates a trade connection with the registered owner.
· The registration of a defensive mark is immune to cancellation action for non-use of the mark and will not be required to show proof of use for the purpose of renewing the defensive registration, so long as the main registration is in force.
· Infringement action can be taken against unlawful use of the well known mark even though the infringing mark is used in relation to dissimilar goods / services.
What constitutes a well-known mark in Malaysia?
Answer 1
A well-known mark must be;
· The mark is well known in Malaysia.
· A mark registered or unregistered.
· The registered owner belongs to an individual who is a member of a country party to the Paris Convention regardless of whether he carries on business, or has any goodwill, in Malaysia.
However, the protection for well known trade marks is only invoked when the conflicting mark uses the same goods or services as that of the well known mark.
Question 2
What are the requirements and types of evidence to qualify a mark as a well-known mark in Malaysia?
Answer 2
The requirements and types of evidence to qualify a mark as a well known mark includes;
· The degree of knowledge or recognition of the mark in the relevant sector of the public.
· The duration, extent and geographical area of any use of the mark.
· The duration, extent and geographical area of any promotion of the mark including advertising or publicity and the presentation, at fairs or exhibition, of the goods and services to which the mark is applied.
· The duration and geographical area of any registrations, or any application for registration of the mark to the extent that they reflect use or recognition to the mark.
· The record of successful enforcement of rights in the mark particularly in extent to which the mark was recognized as well known by competent authorities.
· The value associated with the mark.
Question 3
What is the scope of protection for a well-known mark in Malaysia?
Answer 3
The scope of protection for a well-known mark in Malaysia;
The registration of a mark will not be allowed if: -
· It is identical or confusingly similar or constitutes a translation of a mark which is considered by the relevant authority in Malaysia to be well known in Malaysia, whether or not the mark is registered and used for identical or similar goods or services.
· It is identical or confusingly similar or constitutes a translation of a mark which is considered by the relevant authority in Malaysia to be well known based on the above stated requirements, which is registered in Malaysia, in respect to similar or different goods / services registered for; so long as the use of the mark indicates a connection between those goods and services with the proprietor of the registered well known mark, provided that the interests of the proprietor will be compromised by the use of the conflicting mark.
Question 4
What are the benefits conferred to the registered owner of a well-known mark in Malaysia?
Answer 4
The benefits conferred to the registered owner of a well-known mark;
· In Malaysia, there is no special or separate filing for well known marks. Trade mark applications for well known marks must be go through the standard trade mark examination process.
· In the event an objection is raised during the Registry’s examination of the mark or an opposition issue is raised by a third party, the Applicant may defend their mark by relying on the requirements to qualify a mark as a well known mark as stated above.
· A registered owner of the well known mark is entitled to restrain the use of the mark which were used in the course of trade in Malaysia without the registered owner’s consent and the conflicting mark resembles essential parts or is identical to the well known mark, in respect of the same goods / services, where the use is likely to cause confusion.
Question 5
What are the options of defensive trade mark protection in Malaysia?
Answer 5
The options of defensive trade mark protection;
· A well known mark may be registered as a defensive mark in all classes of goods / services in addition to the classes of goods or services in which the well known mark is actually in use.
· To register for a defensive mark in respect of any goods and services, the registered owner must have an existing registration of the mark.
· A defensive mark must have an established reputation for certain goods and services for which the mark is already registered wherein the registered owner of the mark must show that the public would incorrectly construe that the mark used in relation to other goods and services, indicates a trade connection with the registered owner.
· The registration of a defensive mark is immune to cancellation action for non-use of the mark and will not be required to show proof of use for the purpose of renewing the defensive registration, so long as the main registration is in force.
· Infringement action can be taken against unlawful use of the well known mark even though the infringing mark is used in relation to dissimilar goods / services.
Well-Known Marks In Indonesia
Question 1
What constitutes a well-known mark in Indonesia?
Answer 1
A well-known mark must contain the following elements;
· Public knowledge of the well known mark in the particular business sector.
· Reputation of a well known mark through extensive promotion and investment in other countries.
· Evidence of trade mark registration in other countries.
Question 2
What are the factors to be taken into account when deciding whether a mark is well-known in Indonesia?
Answer 2
Factors to be taken into account when deciding whether a mark is well-known in Indonesia;
· The degree of knowledge or recognition of the mark in the relevant sector of the public.
· The duration, extent and geographical area of any use of the mark.
· The duration, extent and geographical area of any promotion of the mark including advertising or publicity and the presentation, at fairs or exhibition, of the goods and services to which the mark is applied.
· The duration and geographical area of any registrations, or any application for registration of the mark to the extent that they reflect use.
· The record of successful enforcement of rights in the mark particularly in extent to which the mark was recognized as well known by competent authorities.
· Likelihood of confusion or bad faith need to be considered when assessing competing interest to a mark.
Question 3
What is the effect of the recognition of well-known trade mark in Indonesia?
Answer 3
The effect of the recognition of well-known trade mark in Indonesia;
· The registration of a mark that is similar or identical with similar goods to those of the well known mark may be refused registration.
· Protection of well-known marks has been given more emphasis in the sense that provisions for prevention and repression of registration or use of well-known marks by unauthorized person has been strengthened. The owner of a well-known mark under the above mechanism may only file a lawsuit for cancellation after having filed an application for registration of his own mark. This policy is taken due to the prevailing registration system adopted for mark protection in Indonesia.
What constitutes a well-known mark in Indonesia?
Answer 1
A well-known mark must contain the following elements;
· Public knowledge of the well known mark in the particular business sector.
· Reputation of a well known mark through extensive promotion and investment in other countries.
· Evidence of trade mark registration in other countries.
Question 2
What are the factors to be taken into account when deciding whether a mark is well-known in Indonesia?
Answer 2
Factors to be taken into account when deciding whether a mark is well-known in Indonesia;
· The degree of knowledge or recognition of the mark in the relevant sector of the public.
· The duration, extent and geographical area of any use of the mark.
· The duration, extent and geographical area of any promotion of the mark including advertising or publicity and the presentation, at fairs or exhibition, of the goods and services to which the mark is applied.
· The duration and geographical area of any registrations, or any application for registration of the mark to the extent that they reflect use.
· The record of successful enforcement of rights in the mark particularly in extent to which the mark was recognized as well known by competent authorities.
· Likelihood of confusion or bad faith need to be considered when assessing competing interest to a mark.
Question 3
What is the effect of the recognition of well-known trade mark in Indonesia?
Answer 3
The effect of the recognition of well-known trade mark in Indonesia;
· The registration of a mark that is similar or identical with similar goods to those of the well known mark may be refused registration.
· Protection of well-known marks has been given more emphasis in the sense that provisions for prevention and repression of registration or use of well-known marks by unauthorized person has been strengthened. The owner of a well-known mark under the above mechanism may only file a lawsuit for cancellation after having filed an application for registration of his own mark. This policy is taken due to the prevailing registration system adopted for mark protection in Indonesia.
Well-Known Marks In Singapore
Question 1
What constitutes a well-known mark in Singapore?
Answer 1
A well-known mark is defined as;
· A registered trade mark that is well known in Singapore.
· An unregistered trade mark that is well known in Singapore and belongs to an individual who is a member of a country party to the Paris Convention, regardless of whether he carries on business, or has any goodwill, in Singapore.
Question 2
What are the factors to be taken into account when deciding whether a mark is well-known in Singapore?
Answer 2
Factors to be taken into account when deciding whether a mark is well-known in Singapore;
· The degree to which the trade mark is known to or recognised by any relevant sector of the public in Singapore.
· The duration, extent and geographical area of any use or promotion of the mark including any advertising of, any publicity given to, or any presentation at any fair or exhibition of, the goods or services to which the trade mark is applied.
· Any registration or application for the registration of the trade mark in any country or territory in which the trade mark is used or recognised, and the duration of such registration or application.
· Any successful enforcement of any right in the trade mark in any country or territory, and the extent to which the trade mark was recognised as well known by the competent authorities of that country or territory
· Any value associated with the trade mark.
Do take note that these factors act merely as guidelines and are not preconditions for determining whether a mark in question is a well-known trade mark.
Question 3
What are the benefits of well-known trade mark protection in Singapore?
Answer 3
Benefits of well-known trade mark protection;
The proprietor of a well known trade mark shall be entitled to restrain by injunction the use in Singapore, in the course of trade and without the proprietor’s consent, of any trade mark which, or an essential part of which, is identical with or similar to the proprietor’s trade mark, in relation to any goods or services, where the use of the trade mark: -
· Would indicate a connection between those goods or services and the proprietor,
and is likely to damage the interests of the proprietor; or
· If the proprietor’s trade mark is well known to the public at large in Singapore and would cause dilution in an unfair manner of the distinctive character of the proprietor’s trade mark or would take unfair advantage of the distinctive character of the proprietor’s trade mark.
What constitutes a well-known mark in Singapore?
Answer 1
A well-known mark is defined as;
· A registered trade mark that is well known in Singapore.
· An unregistered trade mark that is well known in Singapore and belongs to an individual who is a member of a country party to the Paris Convention, regardless of whether he carries on business, or has any goodwill, in Singapore.
Question 2
What are the factors to be taken into account when deciding whether a mark is well-known in Singapore?
Answer 2
Factors to be taken into account when deciding whether a mark is well-known in Singapore;
· The degree to which the trade mark is known to or recognised by any relevant sector of the public in Singapore.
· The duration, extent and geographical area of any use or promotion of the mark including any advertising of, any publicity given to, or any presentation at any fair or exhibition of, the goods or services to which the trade mark is applied.
· Any registration or application for the registration of the trade mark in any country or territory in which the trade mark is used or recognised, and the duration of such registration or application.
· Any successful enforcement of any right in the trade mark in any country or territory, and the extent to which the trade mark was recognised as well known by the competent authorities of that country or territory
· Any value associated with the trade mark.
Do take note that these factors act merely as guidelines and are not preconditions for determining whether a mark in question is a well-known trade mark.
Question 3
What are the benefits of well-known trade mark protection in Singapore?
Answer 3
Benefits of well-known trade mark protection;
The proprietor of a well known trade mark shall be entitled to restrain by injunction the use in Singapore, in the course of trade and without the proprietor’s consent, of any trade mark which, or an essential part of which, is identical with or similar to the proprietor’s trade mark, in relation to any goods or services, where the use of the trade mark: -
· Would indicate a connection between those goods or services and the proprietor,
and is likely to damage the interests of the proprietor; or
· If the proprietor’s trade mark is well known to the public at large in Singapore and would cause dilution in an unfair manner of the distinctive character of the proprietor’s trade mark or would take unfair advantage of the distinctive character of the proprietor’s trade mark.
Well-Known Marks In Thailand
Question 1
What constitutes a well-known mark in Thailand?
Answer 1
A well-known mark must be;
· A trade mark, service mark, certification mark, collective mark or any other mark that has been used for things other than goods and services.
· A mark registered or unregistered.
· The same mark as that which is being sought for the recordal of a well known mark.
· Continuously used in relation to the goods/services by way of distribution, advertisement, or any other means as a representation of good faith.
· The mark has been widely used in goods faith in Thailand or abroad, such that the general public or the relevant sector in Thailand know and are well aware of the mark.
· The mark is used in such a way that the mark obtains reputation among the mark’s consumers.
· The mark may be used by either the registered owner or by his representative / licensee.
Question 2
What evidence is required for the recordal of a well-known mark in Thailand?
Answer 2
A person seeking for the recordal of a well-known mark in Thailand must submit one or more of the following evidence;
· Documents to show that the mark is known and familiar to the public such as magazines, journals, newspapers and catalogues.
· Evidence of payment such as copies of receipts, invoices and tax receipts.
· Marketing material, advertisements, public relation information and trade information.
· Documents showing the extent of business.
· Other evidence that shows that the mark has gained and maintained its reputation.
Question 3
What are the contributory factors of a well-known mark in Thailand?
Answer 3
The contributory factors;
· Public awareness of the use of the mark.
· The duration, extent and geographical area of use of the mark.
· The duration, extent and geographical area of any advertisements, publications, exhibitions of the mark in relation to the goods/services.
· Extent of the local and foreign marketing of the mark.
· Maintenance of the reputation of the mark.
Question 4
What is the consideration process by the Committee of Well-Known Marks in Thailand?
Answer 4
The mark will be considered in accordance with the above factors and will either: -
· ACCEPT the application and inform the Trade Mark Office of the well known mark or;
· REFUSE the application on grounds that the application is inconsistent with the above requirements, and inform the Applicant immediately. The Applicant is then given 60 days to appeal to the Committee’s decision.
Question 5
What is the scope of protection of a well-known mark in Thailand?
Answer 5
Scope of protection;
· The registered owner of a well known mark in Thailand is able to preclude any person from registering a trade mark similar to or identical with the recorded well known mark.
· The protection and enforcement rights of the registered owner of a well-known mark will be enhanced to a certain degree. In the case of trade mark infringement, the registered owner will generally have to prove that the public may be mislead as to the ownership or source of goods due to the use of an identical or similar trade mark as that of the registered proprietor’s mark. However, if the registered mark has been successfully registered as a well-known mark, the likelihood of confusion is already presumed to be present.
What constitutes a well-known mark in Thailand?
Answer 1
A well-known mark must be;
· A trade mark, service mark, certification mark, collective mark or any other mark that has been used for things other than goods and services.
· A mark registered or unregistered.
· The same mark as that which is being sought for the recordal of a well known mark.
· Continuously used in relation to the goods/services by way of distribution, advertisement, or any other means as a representation of good faith.
· The mark has been widely used in goods faith in Thailand or abroad, such that the general public or the relevant sector in Thailand know and are well aware of the mark.
· The mark is used in such a way that the mark obtains reputation among the mark’s consumers.
· The mark may be used by either the registered owner or by his representative / licensee.
Question 2
What evidence is required for the recordal of a well-known mark in Thailand?
Answer 2
A person seeking for the recordal of a well-known mark in Thailand must submit one or more of the following evidence;
· Documents to show that the mark is known and familiar to the public such as magazines, journals, newspapers and catalogues.
· Evidence of payment such as copies of receipts, invoices and tax receipts.
· Marketing material, advertisements, public relation information and trade information.
· Documents showing the extent of business.
· Other evidence that shows that the mark has gained and maintained its reputation.
Question 3
What are the contributory factors of a well-known mark in Thailand?
Answer 3
The contributory factors;
· Public awareness of the use of the mark.
· The duration, extent and geographical area of use of the mark.
· The duration, extent and geographical area of any advertisements, publications, exhibitions of the mark in relation to the goods/services.
· Extent of the local and foreign marketing of the mark.
· Maintenance of the reputation of the mark.
Question 4
What is the consideration process by the Committee of Well-Known Marks in Thailand?
Answer 4
The mark will be considered in accordance with the above factors and will either: -
· ACCEPT the application and inform the Trade Mark Office of the well known mark or;
· REFUSE the application on grounds that the application is inconsistent with the above requirements, and inform the Applicant immediately. The Applicant is then given 60 days to appeal to the Committee’s decision.
Question 5
What is the scope of protection of a well-known mark in Thailand?
Answer 5
Scope of protection;
· The registered owner of a well known mark in Thailand is able to preclude any person from registering a trade mark similar to or identical with the recorded well known mark.
· The protection and enforcement rights of the registered owner of a well-known mark will be enhanced to a certain degree. In the case of trade mark infringement, the registered owner will generally have to prove that the public may be mislead as to the ownership or source of goods due to the use of an identical or similar trade mark as that of the registered proprietor’s mark. However, if the registered mark has been successfully registered as a well-known mark, the likelihood of confusion is already presumed to be present.
Patent Practice In Malaysia
Question 8
We have a client with broad international patent coverage, but unfortunately no patent in Malaysia. I understand that the Malaysia patent system may be relatively new. Are the patents issued by any other countries (such as the UK) enforceable in Malaysia under some limited circumstances?
Answer 8
The patent system in Malaysia is not new but has been in existence since 1983 (which was replacing the old British Registration system). Malaysia has now an independent Patent system. As such, Malaysia has no provisions to obtain protection based on other countries (e.g the United Kingdom) as was the case prior to 1983 (even for limited circumstances).
Your client can file a Non-Convention application (which will not claim any priority) to be absolutely sure that your client's competitors are barred from filing any small variations of the same technology in Malaysia.
We have a client with broad international patent coverage, but unfortunately no patent in Malaysia. I understand that the Malaysia patent system may be relatively new. Are the patents issued by any other countries (such as the UK) enforceable in Malaysia under some limited circumstances?
Answer 8
The patent system in Malaysia is not new but has been in existence since 1983 (which was replacing the old British Registration system). Malaysia has now an independent Patent system. As such, Malaysia has no provisions to obtain protection based on other countries (e.g the United Kingdom) as was the case prior to 1983 (even for limited circumstances).
Your client can file a Non-Convention application (which will not claim any priority) to be absolutely sure that your client's competitors are barred from filing any small variations of the same technology in Malaysia.
Parallel Imports - Singapore
Question 7
What is the stand in Singapore with regards to parallel imports?
Answer 7
Parallel imports is strictly the importation and sale of goods originating from the registered proprietor by a party who has no common law right to do so. In most circumstances, the parallel imports are imported and sold by third parties who have obtained the goods overseas.
As for the current stand which Singapore adopts when taking into consideration parallel importing matters, can be seen in a string of recent case law.
In Hawley & Hazel Chemical Co Pte Ltd v Szu Ming Trading Pte Ltd [2008], the defendant who was a distributor of Darkie toothpaste products in Singapore brought an action against the plaintiff who was the Singaporean manufacturer of the toothpaste in Singapore, for losses incurred from the competition arising from the parallel importation of genuine but cheaper Darkie toothpaste.
It was decided that the manufacturer was under no obligation to stop parallel imports of the products into Singapore. As such, it is almost impossible to curtail such imports, as they seem to trickle into the country.
Cases such as Public Prosecutor v Tan Lay Heong and Another [1996] emphasizes that although parallel imports may seem like a problem to trade mark owners and exclusive distributors or retailers, in Parliament’s eyes, they epitomize free trade.
The case of Acushnet Company v Metro Golf Manufacturing Sdn Bhd [2006] is a clear cut case of trade mark infringement. The mark TITLEIST belonged to the plaintiff and used in relation to golf clubs, golf balls and golfing accessories. Here, the defendant was caught with counterfeit golf items bearing the TITLESIT mark of the Applicant.
This case differs from a normal parallel import situation as the goods in contention were not goods which originated from an authorized manufacturer.
Thus, the current law in Singapore seems to welcome parallel imports as it is deemed to bring social benefits by bringing the cost of consumables down.
However, the law still prevents the importation of counterfeit goods which are sold under the pretext of being parallel imports, by way of trade mark infringement.
What is the stand in Singapore with regards to parallel imports?
Answer 7
Parallel imports is strictly the importation and sale of goods originating from the registered proprietor by a party who has no common law right to do so. In most circumstances, the parallel imports are imported and sold by third parties who have obtained the goods overseas.
As for the current stand which Singapore adopts when taking into consideration parallel importing matters, can be seen in a string of recent case law.
In Hawley & Hazel Chemical Co Pte Ltd v Szu Ming Trading Pte Ltd [2008], the defendant who was a distributor of Darkie toothpaste products in Singapore brought an action against the plaintiff who was the Singaporean manufacturer of the toothpaste in Singapore, for losses incurred from the competition arising from the parallel importation of genuine but cheaper Darkie toothpaste.
It was decided that the manufacturer was under no obligation to stop parallel imports of the products into Singapore. As such, it is almost impossible to curtail such imports, as they seem to trickle into the country.
Cases such as Public Prosecutor v Tan Lay Heong and Another [1996] emphasizes that although parallel imports may seem like a problem to trade mark owners and exclusive distributors or retailers, in Parliament’s eyes, they epitomize free trade.
The case of Acushnet Company v Metro Golf Manufacturing Sdn Bhd [2006] is a clear cut case of trade mark infringement. The mark TITLEIST belonged to the plaintiff and used in relation to golf clubs, golf balls and golfing accessories. Here, the defendant was caught with counterfeit golf items bearing the TITLESIT mark of the Applicant.
This case differs from a normal parallel import situation as the goods in contention were not goods which originated from an authorized manufacturer.
Thus, the current law in Singapore seems to welcome parallel imports as it is deemed to bring social benefits by bringing the cost of consumables down.
However, the law still prevents the importation of counterfeit goods which are sold under the pretext of being parallel imports, by way of trade mark infringement.
Filling Trademarks In Kanji Characters In Malaysia
Question 4
We have recently become aware that it might be possible to file trademark applications in Malaysia for trademarks in Kanji characters. May we have your opinion as to whether or not it is necessary to file applications normally filed in Roman characters to also filed in Kanji characters?
Answer 4
We are pleased to inform you that it is possible to file trademark applications in Malaysia for trademarks in Kanji characters. This trend has become increasingly popular as Chinese is widely spoken in Malaysia and there has been a surge of applications in Kanji characters at the Malaysian Trade Mark Registry.
As the marks ‘Celgene’, ‘Revlimid’ and ‘Vidaza’ do not have any meaning in Chinese, the Kanji characters will be based on the pronunciation of the English word. However, each similar sounding Chinese character will have a meaning in Chinese.
Question 5
Please confirm that Kanji characters are indeed Chinese characters. To that end, whatever Chinese characters we have filed for CELGENE, REVLIMID and/or VIDAZA in other Asian countries could also be filed in Malaysia and be considered Kanji?
Answer 5
Kanji is essentially the term given to the use of Chinese characters to represent the Japanese language. Therefore, Chinese characters are not referred to as Kanji unless used in a Japanese context.
For the purposes of filing, please be informed that whatever Chinese characters you have filed for CELGENE, REVLIMID and/or VIDAZA in other Asian countries will be afforded protection in Malaysia and we can attend to filing the same at the Malaysian Trade Mark Registry.
Question 6
Do many people file the Kanji characters? We are trying to get a better sense of how important it is to cover the Kanji characters.
Answer 6
In our experiences a large number of our clients have sought protection for Chinese or Kanji Characters, most notably for goods such as pharmaceuticals (class 5), electronic media etc(class 9), stationery etc (class 16) and education, training, entertainment, sporting and cultural activities (class 41).
In order to assess how important it is to cover Chinese or Kanji Characters, it would depend on your target market. We advise filing as it will provide wider protection in Malaysia where Chinese is a widely spoken language and Chinese or Kanji characters appear on many products.
We have recently become aware that it might be possible to file trademark applications in Malaysia for trademarks in Kanji characters. May we have your opinion as to whether or not it is necessary to file applications normally filed in Roman characters to also filed in Kanji characters?
Answer 4
We are pleased to inform you that it is possible to file trademark applications in Malaysia for trademarks in Kanji characters. This trend has become increasingly popular as Chinese is widely spoken in Malaysia and there has been a surge of applications in Kanji characters at the Malaysian Trade Mark Registry.
As the marks ‘Celgene’, ‘Revlimid’ and ‘Vidaza’ do not have any meaning in Chinese, the Kanji characters will be based on the pronunciation of the English word. However, each similar sounding Chinese character will have a meaning in Chinese.
Question 5
Please confirm that Kanji characters are indeed Chinese characters. To that end, whatever Chinese characters we have filed for CELGENE, REVLIMID and/or VIDAZA in other Asian countries could also be filed in Malaysia and be considered Kanji?
Answer 5
Kanji is essentially the term given to the use of Chinese characters to represent the Japanese language. Therefore, Chinese characters are not referred to as Kanji unless used in a Japanese context.
For the purposes of filing, please be informed that whatever Chinese characters you have filed for CELGENE, REVLIMID and/or VIDAZA in other Asian countries will be afforded protection in Malaysia and we can attend to filing the same at the Malaysian Trade Mark Registry.
Question 6
Do many people file the Kanji characters? We are trying to get a better sense of how important it is to cover the Kanji characters.
Answer 6
In our experiences a large number of our clients have sought protection for Chinese or Kanji Characters, most notably for goods such as pharmaceuticals (class 5), electronic media etc(class 9), stationery etc (class 16) and education, training, entertainment, sporting and cultural activities (class 41).
In order to assess how important it is to cover Chinese or Kanji Characters, it would depend on your target market. We advise filing as it will provide wider protection in Malaysia where Chinese is a widely spoken language and Chinese or Kanji characters appear on many products.
Use Of A Mark In Malaysia
Question 3
What constitute use of a mark in Malaysia.
Answer 3
In Malaysia, use includes for e.g. tying a label or ticket on or attaching a label to the outer packaging or casing of the goods. Such use can readily be said to be use of the mark upon or in physical relation to such goods.
Also, use of the mark in relation to advertisements such as billboards, newspaper advertisements etc and use in documents such as brochures, catalogues, business letters and invoices, which refer to the goods, will be “use of the mark in relation to the goods” within the meaning of the law.
A cancellation action is based on the grounds whereby a continuous period of three (3) years has lapsed during which a prior mark, being a registered mark, was not used in goods faith in relation to the goods claimed. In order to avoid cancellation of a trade mark registration based on non-use, out advise to the client is to actively and continuously use the mark in relation to the goods claimed, in Malaysia.
We trust that the above information has been of assistance.
What constitute use of a mark in Malaysia.
Answer 3
In Malaysia, use includes for e.g. tying a label or ticket on or attaching a label to the outer packaging or casing of the goods. Such use can readily be said to be use of the mark upon or in physical relation to such goods.
Also, use of the mark in relation to advertisements such as billboards, newspaper advertisements etc and use in documents such as brochures, catalogues, business letters and invoices, which refer to the goods, will be “use of the mark in relation to the goods” within the meaning of the law.
A cancellation action is based on the grounds whereby a continuous period of three (3) years has lapsed during which a prior mark, being a registered mark, was not used in goods faith in relation to the goods claimed. In order to avoid cancellation of a trade mark registration based on non-use, out advise to the client is to actively and continuously use the mark in relation to the goods claimed, in Malaysia.
We trust that the above information has been of assistance.
License Agreement Or Franchise Agreement
Question 2
Is it better to enter into a License Agreement or Franchise Agreement?
Answer 2
Based on the business nature, we advise the best option would be create a license agreement as opposed to creating a franchise agreement. This is because a franchise agreement is more appropriate if you intend the franchisee to replicate the exact business model you have created, i.e. you help them to set up an identical branch of your business, which everyone else sees as part of your business.
On the other hand trade mark licensing, allows the licensee to operate a business, which is not seen as part of your business but rather as a co-operative venture, and the licensee brings to the business either skills or something else, which you lack other than, simply finance.
Is it better to enter into a License Agreement or Franchise Agreement?
Answer 2
Based on the business nature, we advise the best option would be create a license agreement as opposed to creating a franchise agreement. This is because a franchise agreement is more appropriate if you intend the franchisee to replicate the exact business model you have created, i.e. you help them to set up an identical branch of your business, which everyone else sees as part of your business.
On the other hand trade mark licensing, allows the licensee to operate a business, which is not seen as part of your business but rather as a co-operative venture, and the licensee brings to the business either skills or something else, which you lack other than, simply finance.
Plant Variety Protection In Indonesia
Question 1
Could you provide me with brief explanation of plant variety protection in Indonesia.
Answer 1
Indonesia is known as fertile country and also famous with the rich of its natural resources. As agricultural country, Indonesia is the place where a large number of plants grow.
Agriculture, forestry and plantation is inherent part with Indonesia as agricultural country, therefore along with the rapid development of technology, the protection on plant variety is extremely important.
Indonesia is a paradise for all plant variety inventor/owner to invest and protect their varieties. That is why the government has issued Law No. 29 Year 2000 concerning Plant Variety Protection. Recently, the government also has just inaugurated a few number of PVP Attorney in order to assist the local and foreign applicant to protect their plant variety. For more information, please visit Indonesian IP office at www.dgip.go.id/ebscript/publicportal.cgi
Could you provide me with brief explanation of plant variety protection in Indonesia.
Answer 1
Indonesia is known as fertile country and also famous with the rich of its natural resources. As agricultural country, Indonesia is the place where a large number of plants grow.
Agriculture, forestry and plantation is inherent part with Indonesia as agricultural country, therefore along with the rapid development of technology, the protection on plant variety is extremely important.
Indonesia is a paradise for all plant variety inventor/owner to invest and protect their varieties. That is why the government has issued Law No. 29 Year 2000 concerning Plant Variety Protection. Recently, the government also has just inaugurated a few number of PVP Attorney in order to assist the local and foreign applicant to protect their plant variety. For more information, please visit Indonesian IP office at www.dgip.go.id/ebscript/publicportal.cgi
Industrial Design Process
Question 1
How would you characterize the quality of design examination in your country. Is there only a formality examination (automatic registration)? If there is novelty examination is it thorough or only cursory?
Answer 1
Only formalities examination is employed in Malaysia. The Design Department of the Intellectual Property Corporation of Malaysia (MyIPO) will conduct a formalities examination to conform with procedural requirements and sufficiency.
Question 2
How is design patent protection structured in your country? Is there more than one type of design? What is considered patentable matter regarding designs? If an article is functional can coverage still be obtained?
Answer 2
Design protection in Malaysia allows for single application and multiple applications. Multiple application covers several closely related designs, which fall, in the same class of the International Classification for Industrial Designs or to the same set or composition of articles.
Question 3
Can several closely related designs (multiples) be protected in the same application? If so, is there an additional cost for each related design or are the fees the same regardless of how many designs are included? Is there any other way to expand/broaden design coverage in your country without incurring the expense of a completely new application?
Answer 3
Yes, several closely related designs, which are known as multiple application of a design, can be protected in the same application. Separate payment is required for each design wherein the official fee of the second design of a multiple application would be half the amount of the total fee of the first design.
Question 4
How is color valued with regard to designs? Are black and white renditions considered to be broadest? Are color variations allowed further protection or are they rejected as anticipated by or already protected by a previous or concurrent filing? Is there a type of design protection, which covers colors? For instance, in Mexico, Industrial Models can cover color in a design, but Industrial Models do not.
Answer 4
Black and white renditions are considered to be the broadest protection for design as it covers all colors. There is no specific deign protection which covers colors.
Question 5
Please discuss what protection is available for “partial designs”, i.e., portions of objects, Is this done by a separate type of application? Is the use of dashed lines to disclaim (and thus broaden) a portion of the article claimed by the design application acceptable in your country? How are dashed lines interpreted.
Answer 5
Dashed lines/broken lines are disclaimed as it is considered for illustrative purposes only.
Question 6
Is there a mechanism such as “similar design” applications to cover adjustments to a design, which arise following the initial application? Can Patrick Mirnadah Co. help us on this matter?
Answer 6
There is no similar design application in Malaysia.
Question 7
Is it possible to “conform” a design application based on a grant by an examining country, such as the ECD or US, etc.?
Answer 7
No, it is not possible to conform a design application based on a grant by an examining country.
Question 8
Are any changes in your intellectual property laws or practice anticipated for the future? Is there any indication of interest in the Hague Agreement on Designs?
Answer 8
No.
Question 9
What is the average time from application date to grant date?
Answer 9
Average time from application date to grant date is 1 year.
Question 10
Is it possible to defer publication of an application or keep an application secret for a period of time?
Answer 10
It is not possible to defer publication in Malaysia and the applicant is not allowed to keep an application secret for a period of time as all design applications are required to be published at the Government Gazette in Malaysia. For more details, please visit www.myipo.gov.my
Question 11
Is there a “grace period” for exposure of designs in your country? Is so, what are the requirements following an exposure?
Answer 11
There is no grace period for exposure of design in Malaysia.
Question 12
What type of shading (if any) is acceptable in your country?
Answer 12
Shading in any form is not accepted, as it is not a form of protection.
How would you characterize the quality of design examination in your country. Is there only a formality examination (automatic registration)? If there is novelty examination is it thorough or only cursory?
Answer 1
Only formalities examination is employed in Malaysia. The Design Department of the Intellectual Property Corporation of Malaysia (MyIPO) will conduct a formalities examination to conform with procedural requirements and sufficiency.
Question 2
How is design patent protection structured in your country? Is there more than one type of design? What is considered patentable matter regarding designs? If an article is functional can coverage still be obtained?
Answer 2
Design protection in Malaysia allows for single application and multiple applications. Multiple application covers several closely related designs, which fall, in the same class of the International Classification for Industrial Designs or to the same set or composition of articles.
Question 3
Can several closely related designs (multiples) be protected in the same application? If so, is there an additional cost for each related design or are the fees the same regardless of how many designs are included? Is there any other way to expand/broaden design coverage in your country without incurring the expense of a completely new application?
Answer 3
Yes, several closely related designs, which are known as multiple application of a design, can be protected in the same application. Separate payment is required for each design wherein the official fee of the second design of a multiple application would be half the amount of the total fee of the first design.
Question 4
How is color valued with regard to designs? Are black and white renditions considered to be broadest? Are color variations allowed further protection or are they rejected as anticipated by or already protected by a previous or concurrent filing? Is there a type of design protection, which covers colors? For instance, in Mexico, Industrial Models can cover color in a design, but Industrial Models do not.
Answer 4
Black and white renditions are considered to be the broadest protection for design as it covers all colors. There is no specific deign protection which covers colors.
Question 5
Please discuss what protection is available for “partial designs”, i.e., portions of objects, Is this done by a separate type of application? Is the use of dashed lines to disclaim (and thus broaden) a portion of the article claimed by the design application acceptable in your country? How are dashed lines interpreted.
Answer 5
Dashed lines/broken lines are disclaimed as it is considered for illustrative purposes only.
Question 6
Is there a mechanism such as “similar design” applications to cover adjustments to a design, which arise following the initial application? Can Patrick Mirnadah Co. help us on this matter?
Answer 6
There is no similar design application in Malaysia.
Question 7
Is it possible to “conform” a design application based on a grant by an examining country, such as the ECD or US, etc.?
Answer 7
No, it is not possible to conform a design application based on a grant by an examining country.
Question 8
Are any changes in your intellectual property laws or practice anticipated for the future? Is there any indication of interest in the Hague Agreement on Designs?
Answer 8
No.
Question 9
What is the average time from application date to grant date?
Answer 9
Average time from application date to grant date is 1 year.
Question 10
Is it possible to defer publication of an application or keep an application secret for a period of time?
Answer 10
It is not possible to defer publication in Malaysia and the applicant is not allowed to keep an application secret for a period of time as all design applications are required to be published at the Government Gazette in Malaysia. For more details, please visit www.myipo.gov.my
Question 11
Is there a “grace period” for exposure of designs in your country? Is so, what are the requirements following an exposure?
Answer 11
There is no grace period for exposure of design in Malaysia.
Question 12
What type of shading (if any) is acceptable in your country?
Answer 12
Shading in any form is not accepted, as it is not a form of protection.
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