Copyright (Amendment) Bill 2021 Approved - Works Distributed via Streaming and Related Offences

• Access to works for visually impaired under Marrakesh Treaty
• Better Collective Management Organizations (CMO)
• Works distributed via streaming technology and related offences - fine RM10,000 to 200,000, 20 years of prison or both

On 15 Dec 2021, Alexander Nanta Linggi, the Minister of Domestic Trade tabled a Bill to amend the Copyright Act 1987 in Dewan Rakyat, the lower house of the parliament. The first reading was made two days earlier.

Alexander Nanta Linggi

Parlimen Malaysia

We have compiled YouTube sessions of the tabling, debate and passing of the bill.

[4:11:07] Tabling of Copyright (Amendment) Bill 2021 for Second Reading. The text of the Bill in English and Malay.

[4:19:10] Debate by Members of Parliament: Debate by Members of Parliament: Choong Shiau Yoon (Tebrau), Wilfred Madius Tangau (Tuaran), Che Abdullah (Tumpat), Wong Hon Wai (Bukit Bendera), Sim Tze Tzin (Bayan Baru), Che Alias Hamid (Kemaman), and Cha Kee Chin (Rasah). 

Alexander explained that the amendment is in line with Marrakesh Treaty to facilitate access for persons who are visually impaired to published works. He said the treaty provides exceptions in obtaining the approval of copyright owners to make and distribute reading materials in formats that are accessible to the visually impaired community.

Wilfred complained about low royalties received by Sabah musicians. He hoped the decentralization of Collective Management Organizations (CMO) can improve royalty collection. Alexander replied that MyIPO will issue guidelines for CMOs to ensure transparent royalty collection. CMOs are being set up for Sabah and Sarawak, respectively.

Kee Chin noted that a new part is added in relation to streaming technology. He asked if it would be an offence to buy an Android box to view legitimate content. Alexander replied that buying and using the Android box with legitimate service is not an offence. Parties involved in offering Android box that facilitates steaming of illicit content is an offence with a fine of RM10,000 to 200,000 or 20 years of prison, or both.

[5:17:38] The second reading of the Bill was agreed. The Bill was tabled again for third reading and passed.

There are 20 clauses in the Bill which was then tabled in Dewan Negara, the upper house of parliament by Rosol Wahid, the Deputy Minister of Domestic Trade on 22 Dec 2021.

Parlimen Malaysia

[1:34:39] Tabling of Copyright (Amendment) Bill 2021 for Second Reading. 

[1:41:38] Debate by members of the Senate: Kesavadas Achyuthan Nair, Mohd Apandi and Hajjah Wan Martina

[2:15:56] The second reading of the bill was agreed. The bill was tabled for third reading and passed.

** The Copyrights (Amendment) Act 2022 is in force since 18 Mar 2022 **

Patents (Amendment) Bill 2021 Approved - Patents Recognized as Personal Property

• Deposit of microorganism under Budapest Treaty
• Patents recognized as personal property
• Opposition procedure introduced

On 15 Dec 2021, Alexander Nanta Linggi, the Minister of Domestic Trade tabled a Bill to amend the Patents Act 1983 in Dewan Rakyat, the lower house of the parliament. The first reading was made two days earlier.

Alexander Nanta Linggi

Parlimen Malaysia

We have compiled YouTube sessions of the tabling, debate and passing of the bill.

[2:39:14] Tabling of Patents (Amendment) Bill 2021 for Second Reading. The text of the Bill in English and Malay.

[3:15:20] Debate by Members of Parliament: Choong Shiau Yoon (Tebrau), Shaharizukirnain (Setiu), Wong Hon Wai (Bukit Bendera), Mohamed Hanipa (Sepang), Nurul Izzah (Permatang Pauh), and Cha Kee Chin (Rasah).

Alexander stated that patents would be recognized as a personal property, hence, patents can be mortgaged at financial institutions. He also explained that IP Journal is chosen to publish granted patents instead of Government Gazette to speed up the registration of patents.

Alexander added that compulsory licensing allows the government to address public health issues involving medicine. On the other hand, Budapest Treaty is acknowledged to formalize an international mechanism to recognize inventions involving microorganisms. Applicants would need to deposit microorganisms once to enjoy patent recognition among members of the treaty.

He announced that an IP Fund of RM1 million annually is allocated to encourage IP filings among SMEs, polytechnic, students and youth.

Third party observation and opposition is introduced in the amendment to strengthen the quality of patents. In line with developed countries, third parties can participate in the patent application process.

The amendments took into consideration Malaysia's commitment in the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS) relating to public health, Regional Comprehensive Economic Partnership (RCEP)  and Progressive Agreement for Trans-Pacific Partnership (CPTPP).

[4:08:21] The second reading of the Bill was agreed. The Bill was tabled again for third reading and passed.

There are 69 clauses in the Bill which would need to be tabled in Dewan Negara, the upper house of parliament. We will provide our commentary on the amendment in the future. Stay tuned!

- 22 Dec 2021 update -

On 22 Dec 2021, Rosol Wahid, the Deputy Minister of Domestic Trade tabled the Bill to amend the Patents Act 1983 in Dewan Negara, the upper house of the parliament. 

Parlimen Malaysia

[58:33] Tabling of Patents (Amendment) Bill 2021 for Second Reading.

[1:05:46] Debate by Members of the Senate: Razali Idris and Mohd Apandi.

[1:31:44] The second reading of the Bill was agreed. The Bill was tabled again for third reading and passed.

** The Patents (Amendment) Act 2022 is in force since 18 Mar 2022 **

5 Things To Know About Trademarks Bill 2019

Domestic Trade and Consumer Affairs deputy minister Chong Chieng Jen

The Trademarks Bill 2019 was passed by Dewan Rakyat on 2 July 2019. It is intended to replace the current Trade Marks Act 1976. Domestic Trade and Consumer Affairs deputy minister Chong Chieng Jen said that expansion of trademark protection scope was necessary, according to Malay Mail/Bernama.

We present '5 Things To Know About Trademarks Bill 2019' after reading the bill.

1. Shape of goods, sound, scent, hologram, sequence of motion can be registered

The subject matter of trademark includes letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof. The scope of trademark matter is expanded to be in line with international practice of trademark matters.

The shape of goods must be distinctive in that it is not a result of the nature of the goods, for example Toblerone chocolate. Example of distinctive sound marks include 20th Century Fox fanfare.

2. Trademark applications identical as unregistered well-known mark are refused

The scope of well-known trademark has been expanded to any trademark that is well-known in Malaysia whether or not that person carries on business, or has any goodwill in Malaysia. It means that the Registrar can cite an unregistered mark to refuse an identical trademark application.

To increase the chances of trademark registration, a local search shall now be expanded to an international trademark search. We have more than 10-years of experience conducting international patent search. We can adapt patent search strategy into international trademark search to reduce chances of international citations.

3. Trademark applications similar as unregistered well-known mark for similar goods or services could be refused

The Registrar could cite an unregistered mark to refuse a similar trademark application for similar goods or services. We foresee that the threshold of refusal could be increased after the implementation of Trademarks Bill. We were informed by a source that the Bill could be implemented in January 2020. Trademark applications submitted in 2020 will then be examined according to the Bill.

4. A bundle of foreign trademarks can be filed based on local registered mark

Malaysians can file a bundle of foreign trademarks in a convenient and cost effective manner. Malaysia will join Madrid Protocol, an international treaty to allow applicants to file trademark in multiple countries in a single application.

We have more than 10-years of experience in international patent application. We can adapt patent application strategy into international trademark application strategy.

5. Trademarks are recognized as security asset

The recognition of trademark as security asset or private asset will enhance the value of trademark as an asset. Trademark could be used as a security for flexible financing options.

The full text of the Trademarks Bill.

We compiled YouTube sessions of the tabling, debate and passing of the bill.  

[ 2:04:22] 2 July 2019. Tabling of Trademarks Bill 2019 for second reading.

[ 2:27:13] Morning session debate by Members of Parliament: Wong Hon Wai (Bukit Bendera), and Ahmad Maslan (Pontian).

[ 0:02:11] Afternoon session debate by Members of Parliament: Choong Shiau Yoon (Tebrau), Adham Baba (Tenggara), Chan Foong Hin (Kota Kinabalu), Shahidan Kassim (Arau), SN Rayer (Jelutong), and Mohd Shahar Abdullah (Paya Besar).

[ 2:38:44] Voting of second reading. The Bill was tabled again for third reading and passed.

[1:40:05] 23 July 2019. Tabling of Trademarks Bill 2019 for second reading in Dewan Negara.

[1:53:43] Debate by Members of the Senate: Razali Idris, Kesavadas Achyuthan Nair, Rabiyah Ali, Sabani Mat, Mohd Yusmadi Mohd Yusoff, and Rahimah Mahamad.

[ 5:04:04] The second reading was approved. The Bill was tabled again for third reading and passed.