Local Trader Succeeds Against Bata
Malaysia 's Multimedia Super Corridor
Publication of Patents
MACKRELL INTERNATIONAL
Malaysia Accedes to PCT
Malaysia on the US Watch List for Intellectual Property
Domain Name Dispute Resolution

Pro-active Exercise for Better Manpower in the Patents Department

 

Domain Name Dispute Resolution

 

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 Malaysia ).

 

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 Malaysia , the Malaysian Network Information Centre Bhd. (MYNIC Bhd.) takes charge of distribution of domain names ending with .my. It has appointed accredited Registrars to register domain names for applicants and the Kuala Lumpur Regional Centre for Arbitration (KLRCA) to resolve domain name disputes through its panelists.

 

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>, <tamiflulocaterincolorado.com>and

<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 Malaysia and had applied there for a trademark for the word Waterboss. Before this date, however,the Respondent or its predecessor partnership had used the word Waterboss on their advertising material for other water coolers. Whether they were right to do so is not something that can be decided by a Panel which cannot see and hear witnesses. The Tribunal accordingly cannot   find as proved that the disputed domain name was registered and/or is being used in bad faith. That may well be so but this administrative procedure is an inappropriate vehicle for making such a conclusion. Any decision from this Panel could be seen as determining the parties’ trademark rights which is the province of the Registry of Trade Marks or the Courts”.

 

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.

 

 

Malaysia Accedes to PCT

 

The Patent Cooperation Treaty (PCT) concluded in 1970 came into force in Malaysia on 16 August 2006. Malaysia is one of the last few Asian countries to accede to this Treaty.

 

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 Malaysia may file an international application at MyIPO (Malaysia Intellectual Property Office). The application must

 

                      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 Malaysia may also file his application with the International Bureau of WIPO in Geneva .

 

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 Malaysia and the documents and information required for such an application are:

 

                      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

 

 

 

 

MACKRELL INTERNATIONAL

 

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 Kuala Lumpur in 2006, RamRais & Partners played host to the delegates. It also conducted 2 seminars at its premises. The first dealt with doing business and intellectual property protection in India . The speakers were Mr Prakash Mehta of Malvi Ranchoddas & Co., Mumbai and Mr Sudhir Ravindran of Global Business Solutions, Chennai. The second focused on doing business in China and developing an intellectual property strategy there. The speaker was Mr Blaine Turnacliff of Lehman Lee & Xu, Shanghai .

 

In February 2007, the Australian firm Lander & Rogers played host to the Asia Pacific Regional Meeting in Melbourne . Caroline Francis and W.A. Shashila from RamRais & Partners attended the meeting. In conjunction with this, a seminar on doing business in the Asia Pacific was held at the premises of the host. Shashila spoke on doing business in Malaysia to a distinguished group of Australian entrepreneurs.

 

Malaysia ’s Multimedia Super Corridor

 

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 Twin Towers at the Kuala Lumpur City Centre to the Kuala Lumpur International Airport at Sepang. Five cybercities came into existence i.e. Cyberjaya Flagship Zone, Kuala Lumpur City Centre, Technology Park Malaysia , UPM-MTDC Technology Incubation Center and the Kuala Lumpur Tower .

 

MSC Malaysia is now extended to include Kulim High Tech Park in Kedah and Penang Cybercity 1 in Bayan Lepas, Penang and three other locations referred to as cybercentres i.e. KL Sentral, Melaka International Trade Centre and Menara MSC Cyberport in Johore.

 

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

                   Multimedia University

                  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)

 

 

Publication of Patents

 

 

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.