A domain
name consists of a second level domain (SLD) e.g. tamiflu and a generic top
level domain (gTLD) e.g. .com, .net and .org. It may have a country code
top-level domain (ccTLD) as well, e.g. .my (for
The
Internet Corporation for Assigned Names and Numbers (ICANN) oversees
distribution of domain names. It appoints accredited Registrars whose task is
to register for applicants, domain names excluding ccTLD. It also appoints
accredited domain name dispute resolution providers to handle domain name
disputes.
The
leading ICANN-accredited domain name dispute resolution service provider is the
World Intellectual Property Organisation (WIPO) which has a register of panelists
to decide on domain name disputes. There is no international treaty but there
is a contractual relationship binding the registrars and the applicants to
refer the domain name disputes for resolution by the domain name dispute
resolution providers appointed by ICANN.
As to the
registration of domain names with country codes, there is a similar arrangement
in many countries. For example, in
Mr.
Hariram Jayaram of RamRais & Partners serves as a panelist both with WIPO
and KLRCA. His recent decisions as a WIPO panelist concern the SLD tamiflu
reported as –
·
F.
Hoffmann-La Roche AG v. Kentech Inc,
WIPO Case No. D2006-0386
<purchasetamiflu.org>
·
F.
Hoffmann-La Roche AG v. Dron&K,
WIPO Case No. D2006-0404 <buytamifluonline.net>
·
F.
Hoffmann-La Roche AG v. Xrt Services P/L,
WIPO
Case No. D2006-0410
<tamifluandeffectivenessandsafety.com>, <tamifludogsveterinary.com>,
<tamifluedorel.com>,
<tamifluparvo.com>
·
F.
Hoffmann-La Roche AG v. Titan Net,
WIPO Case No. D2006-0424 <tamifluonline.org>
·
F.
Hoffmann-La Roche AG v. Tamiflu-Antibiotic.com,
WIPO Case No. D2006-0448
<tamiflu-antibiotic.com>
Under the
Uniform Domain Name Dispute Resolution Policy (UDRP) and as the sole WIPO
panelist, Mr. Hariram Jayaram gave decisions for the transfer of the disputed
domain names to F. Hoffmann-La Roche AG, the owner of the trade mark tamiflu,
on the grounds that -
• the domain names were confusingly similar to
tamiflu;
• the respondents did not have rights or legitimate
interests in the domain names and
• the domain names were registered and used in bad
faith.
His recent
decision as one of the 3 panelists of KLRCA concern the SLD waterboss reported
as William R. Hague Inc. dba Hague Quality Water International And Water N Boss
Marketing Sdn. Bhd.,Case No rca/dndr/2006/09 <waterboss.com.my>
The other
panelists were The Hon. Sir Ian Barker, QC (Presiding Panelist) and Ms. Harini
Narayanswamy.
Under the
MYNIC Domain Name Dispute Resolution Policy (MYDRP), the panel is empowered to
order the cancellation of the disputed domain name or require its transfer to
the Complainant on the grounds that -
• The
domain name is identical or confusingly similar
to a trade mark or service mark to which the Complainant has rights; and
• The
respondent has registered and/or used the
domain name in bad faith.
The
panel’s finding was that the disputed domain name <waterboss.com.my> was
identical to WATER BOSS, the trade mark of William R. Hague Inc. dba Hague
Quality Water International. As to bad faith registration, the panel took the
view that :
“ … Here, rightly or wrongly, the
Respondent is using the name WATER BOSS in its business of selling water
equipment (albeit that such equipment is manufactured by firms other than the
Complainant). The Respondent may be susceptible to a claim at common law for
passing-off. If the Complainant’s trademark application were to be successful,
the Respondent could be liable in an infringement action. There could be
proceedings in the Registry of Trade Marks which is faced with two trademark
applications for the same name in the same industry. …As at the date of
registration of the disputed domain name in the name of the Respondent (October
2004 at the earliest or probably later), the Complainant had a presence in
The panel
dismissed the complaint.
Local Trader Succeeds Against Bata
Bata Ltd. v. Sim Ah Ba & Ors 3
CLJ [2006] 393
Sim Ah Ba
& Ors (Sim & Ors) applied for registration of their trade mark at the Registry of
Trade Marks Malaysia on 5 July 1998 under class 25 for socks and underwear. The
application was accorded the number 88/03298 and bore the following
representation:
There was
already on the Register, the trade mark No. M/57693
registered by Bata Ltd., (Bata) on 23 August 1971 under class 25 for shoes,
boots and parts thereof, slippers and sandals, with the disclaimer of the
exclusive right to the word “POWER”. It had the following representation:
When
processing Sim & Ors’ application, the Registrar raised an ex-parte
objection to the registrability of their trade mark on the grounds that Sim
& Ors’ mark might cause confusion and deception to the public because of
its similarity to Bata’s trade mark. Sim & Ors submitted that there would
be no confusion or deception. Accepting the explanation, the Registrar
proceeded to have Sim & Ors’ trade mark advertised in the Government
gazette. Bata did not commence opposition proceedings against the registration
of Sim & Ors’ trade mark after the gazette notification. Sim & Ors’
trade mark proceeded to registration.
Bata
commenced proceedings in the High Court of Malaya for an order to rectify the
Register of Trade Marks by the removal of Sim & Ors’ trade mark from the
Register. After hearing the parties, the High Court dismissed Bata’s claim.
Bata appealed to the Court of Appeal against the decision of the High Court.
The Court
of Appeal said:
• The
two trade marks placed side by side exhibited many
differences. Bata’s goods were only retailed in its exclusive ‘BATA’
shops or those of its franchisees. Its goods
were not sold in general
merchandise outlets such as those of Sim & Ors. The idea of Bata’s
trade mark was diluted on account of these facts. There was
little likelihood that the general public would be confused and
deceived by the presence of the two contending trade marks.
• Bata’s
registration of its trade mark was secured with the disclaimer
of the exclusive right to use “POWER”. The word ‘power’ was
in fact a generic and common name. Bata was
not entitled to
use it exclusively.
• Although
registered under the same classification i.e. class 25,
the socks and underwear, for which Sim & Ors had secured
registration,
contrasted dramatically from the shoes, boots,
slippers and sandals of Bata.
• Substantial
weight should be given to the decision of the Registrar
who allowed the registration of Sim & Ors’ trade mark after
taking note of the prior registration of Bata’s trade mark.
W. A.
Shashila of RamRais & Partners represented Sim & Ors in whose favour
the final decision was given.
The Patent
Cooperation Treaty (PCT) concluded in 1970 came into force in
Advantage
Prior to
the coming into force of the PCT, it was obligatory on the part of the
applicant to file a patent application within 12 months from the filing date of
the basic application to claim priority. With Malaysia acceding to the PCT, the
applicant has more time to decide whether he would like to seek protection in
Malaysia i.e enter the national phase, since under the PCT he may file the
application in Malaysia within 30 months from the filing date or the priority
date of the PCT application (whichever is earlier).
Malaysian
national or resident
A national
or resident of
• be
in English
• be
intended as an international application
• have
the effect of designating all the member states
• provide
the name of the applicant and
• have
a description of the invention and the claims
The
application filed at MyIPO will undergo an international search. The
international searching authority may be specified by the applicant as the
Korean Intellectual Property Office, the Australian Patent Office or the
European Patent Office.
Instead of
filing at MyIPO, the national or resident of
National
or resident of contracting state
A national
or resident of a contracting state, having filed his international application
on or after 16 August 2006, may seek the national phase entry into
• Names
and addresses of the applicant and the inventor
• Form
for appointment of a patent agent (Form 17)
signed by the applicant
• Statement
justifying the applicant’s right to a patent
signed by the inventor
• The
international application number
• Copies
of the patent specification and the priority
document
• The
application form (Form 2A) for entering the
national phase signed by the applicant or his patent
agent
RamRais
& Partners is a member of Mackrell International, an international
organisation of independent mid-sized law fims.
When this
organisation held its Asia Pacific Regional Meeting in
In
February 2007, the Australian firm Lander & Rogers played host to the Asia
Pacific Regional Meeting in
The
Multimedia Super Corridor of Malaysia (MSC Malaysia) was conceived as an
information technology hub by the Government of Malaysia to transport the
country into the information age.
Location
In the
beginning, it was a 15km wide by 50km long corridor, stretching from the
MSC
Malaysia is now extended to include
Incentives
The
Government grants MSC Malaysia status to eligible companies located in these
areas. The incentives which come with the grant are as follows:
Financial
incentives
• Pioneer
status - 100% exemption from taxable
statutory income. This
incentive is granted for a
period of 5 years for the
first round
• A
100% Investment Tax Allowance
• Eligibility
for R&D grants (for MSC Malaysia status
companies with majority
Malaysian ownership)
• Freedom
to source capital and borrow funds globally
• Duty
free importation of multimedia equipment.
Non-Financial
incentives
• Intellectual
property protection and a pioneering
and comprehensive framework
of cyberlaws
• No
censorship of the Internet
• High-powered
implementation agency to act as an
effective one-stop super shop
• World-class
physical and IT infrastructure
• Globally
competitive telecommunication tariffs and
services
• High-quality
planned urban development
• Excellent
R&D facilities, including the region’s first
• Green
environment protected by strict zoning.
Eligibility
To be
eligible, a company must satisfy 6 criteria i.e.:
• Be
a provider or heavy user of multimedia products
and services
• Employ
a substantial number of knowledge workers
• Provide
technology transfer and/or contribute
towards the development of
MSC Malaysia or
support Malaysia’s K-economy
initiatives
• Establish
a separate legal entity for MSC Malaysia
qualifying multimedia
businesses and activities
• Be
located in MSC Malaysia-designated cybercities
• Comply
with environmental guidelines.
Source:
http://www.msc.com.my
Application
To apply
for MSC Malaysia status the company should register its interest in a specified
form known as Pre-Application Form with the Multimedia Development Corporation
(MDeC) at:
Multimedia
Development Corporation Sdn. Bhd.
MSC Malaysia
Headquarters
2360
Persiaran APEC
63000
Cyberjaya
Selangor
Darul Ehsan
Malaysia
Tel:
603-8315 3000
E-mail:
clic@mdec.com.my
The
Account Manager at MDeC will evaluate the commercial and technical aspects of
its proposal. The company will thereafter make a formal application to MDeC by
submitting the following:-
1. Application
Form
2. 3
copies of its business plan
3. Particulars
relating to its incorporation at the
Companies Commission of
Malaysia
4. 3
year audited report on substantial stakeholders of the company
5. Processing
fee of RM2,000.
The
Account Manager will issue the Letter of Acceptance of the application to the
company. He will present the client’s application to the Approval Committee
which makes recommendations to the Ministry of Finance and Ministry of
International Trade and Industry. Once these ministries agree to the
recommendations, approval will be given to the company and the MSC Malaysia
certificate will be issued.
The whole
process, if all the papers are in order, may be completed in 2 or 3 months.
Malaysia
on the US Watch List for Intellectual Property
Section
301
Section
301 of the Trade Act 1974 (19 U.S.C. § 2411) of the United States of America
enables that country to impose sanctions against a country which has an act,
policy or practice that
“(i)
violates, or is inconsistent with, the provisions of, or otherwise denies
benefits to the United States under, any trade agreement, or (ii) is
unjustifiable and burdens or restricts United States commerce”.
The
United States Trade Representative identifies annually, countries which do not
have “adequate and effective” protection for intellectual property or do not
give “fair and equitable market access” to persons from United States with
intellectual property rights. He draws up the “Special 301 Report” with two
watch lists:
• The
“Priority Watch List” and
• The
“Watch List”
Countries
with “the most onerous and egregious” laws and practices and without
significant progress in providing adequate intellectual property protection are
listed in the “Priority Watch List”. For 2007, the listed countries are
Argentina, Chile, China, Egypt, India, Israel, Lebanon, Russia, Thailand,
Turkey, Ukraine, and Venezuela.
Those
countries not placed on the “Priority Watch List” but have inadequate enforcement
practices of concern to the United States, are placed on the “Watch List”. For
2007, the listed countries are Belarus, Belize, Bolivia, Brazil, Canada,
Colombia, Costa Rica, Dominican Republic, Ecuador, Guatemala, Hungary,
Indonesia, Italy, Jamaica, Korea, Kuwait, Lithuania, Malaysia, Mexico,
Pakistan, Peru, Philippines, Poland, Romania, Saudia Arabia, Taiwan, Tajikstan,
Turkmenistan, Uzbekistan, and Vietnam.
Malaysia
remains on the “Watch List” for 2007. As stated by the United States Trade
Representative
“Notwithstanding
the progress made, some problems remain in terms of piracy and lack of adequate
enforcement in Malaysia. Pirate entertainment software production for export
continues to be a major concern. While optical disc plants should continue to
be monitored for pirate production, Customs authorities also need to continue
to enhance monitoring of exports of entertainment software, and take measures
to address problems of false documentation, a regular occurrence in exports
originating from Malaysia. Book piracy in the form of massive illegal
photocopying in and around university campuses remains an issue of concern, and
the authorities, while cooperative, have not succeeded in lowering piracy
levels there. End-user piracy of business software remains a major source of
losses for the business software industry. Finally, prosecutors, while taking
greater numbers of cases than before, sometimes do not succeed with cases due
to lack of experience, procedural hurdles, or problems and delays experienced
at court”:(2007 Special 301: Malaysia, Issued February 12, 2007, Page 330)
Pro-active Exercise for Better
Manpower in the Patents Department
Registered
Patent Agent
A person
domiciled or resident in Malaysia may file an application at the Patent
Registration Office for a patent either directly or through a patent agent. A
person who is not domiciled or resident in Malaysia may only do so through a
patent agent. Under Regulation 45(c) of the Patents Regulations 1986 made
pursuant to s. 87 of the Patents Act 1983, to qualify as a patent agent, the
applicant must satisfy the Registrar of Patents-
(a) that
he is domiciled in or is a permanent resident of
Malaysia;
(b) that
he is an advocate and solicitor of the High Court
in Malaya or an advocate of
the High Court in Sabah
and Sarawak, or has a
relevant degree or its equivalent in
an appropriate branch of engineering or science
from an institution of higher
learning approved by the
Board of Examiners, or has
qualifications entitling
him to graduate membership of
a professional
engineering or scientific
institution or the like recognized
by the Board of Examiners;
and
(c) that
he has passed the prescribed examination for patent agents.
Patent
Agents Examination
The
Patents Examination Board arranges for an intensive 1 week course for
candidates who intend to sit for the examination for patent agents. They have
to pass the following subjects:
• Technology;
• Malaysian
Patent Law and Practice (including patent
drafting);
• Malaysian
Trade Mark and Designs Law and Practice; and
• Foreign
Industrial Property Law and Practice.
Mr.
Hariram Jayaram of RamRais & Partners serves in the Board of Examiners of
Patent Agents. Ms. Caroline Francis lectures on the subject, Foreign Industrial
Property Law and Practice and sets and marks the paper.
Technical
staff
RamRais
& Partners recruits science graduates for its Patents Department and
sponsors among its staff, candidates for the examination for patent agents. The
primary aim is to have a well-manned Patents Department which is able to handle
efficiently the work entrusted to it by its clients.
Link with
University College Sedaya International
To
recruit the right people to work in this department and take the examination
for patent agents the firm has established links with University College Sedaya
International (UCSI), a private university with a state-of-the-art campus
providing inter alia degrees in Applied Sciences.
On 27
March 2007, RamRais & Partners signed the Memorandum of Understanding (MOU)
with UCSI with the aim of working together to ensure that the academic and work
experience aspects of the Co-Op Programme of UCSI are carried out to the mutual
satisfaction and to the benefit of the student participants, UCSI and RamRais
& Partners. USCI students now have the opportunity to work for 2 months at
RamRais & Partners every year and be exposed to various tasks, e.g studying
and analyzing patent specifications, filing of applications for registration of
patents, requesting the Registry of Patents to proceed with substantive
examinations, obtaining certificates of registration and communicating with
clients. Upon graduation, an intern has the option to work as a Legal Executive
at RamRais & Partners and become a patent agent eventually.
A recent
intern to benefit from this Co-Op Programme was Ms. Yap Boh Yee, a final year
student for B.Sc. (Hons.) in Biotechnology at UCSI.
The firm
conducted a career talk on the topic “Career as a Patent Agent for Science
Graduates” during UCSI’s Life Sciences Career Week on 27 March 2007 to expose
the students to the career of a patent agent in a patent agent cum law firm.
The firm
has also set up a fund to award an annual scholarship known as the “RamRais
& Partners Top Applied Sciences Student Award” to the best student in the
final examination for biotechnology. This year the scholarship was awarded to
Ms. Lim May Szin on 2nd August 2007 at UCSI’s Awards Day 2007.
