Description: This textbook provides practical insights and guidance from an experienced group of intellectual property (IP) law practitioners explaining the law, practice, and procedure of protecting and enforcing IP rights in Malaysia. Edited by an eminent judge and an accomplished IP law practitioner, this book is structured into five principal parts covering Trademarks, Patents, Copyright, Industrial Designs, and Trade Secrets. The expert commentary presents a comprehensive account of the substantive rules that govern these areas of IP law, with the focus being primarily on the Malaysian position. In addition to the thorough survey of local law, references have been made to case law from foreign jurisdictions where uncertainties arise in the local position. This provides a different perspective on possible approaches that may be applicable in addressing the local issues and the strategic planning of IP enforcement action in Malaysia. References to applicable international treaties and conventions ensure that coverage is complete and authoritative. The amendments brought in by the Copyright (Amendment) Act 2022 (Act A1645) and the Patents (Amendment) Act 2022 (Act A1649) as well as the accompanying new subsidiary legislation have been carefully considered. This reference guide is one not to be missed by IP law practitioners, trademark and patent agents, in-house counsel, business owners, and anyone interested in Malaysian IP law.

“Whatever your motive for opening this book, or your jurisdictional viewpoint, you will find useful and scholarly insights into copyright law, expressed in an enjoyable way.”

From the Foreword by Alison Firth

Prof Emeritus, University of Surrey; Visiting Professor, Newcastle Law School; Visiting Professorial Fellow, Queen Mary Intellectual Property Research Institute

This comprehensive and authoritative book provides an in-depth analysis of copyright law in Malaysia. In this third edition, the text has been thoroughly updated to include the latest developments in copyright law, including the Copyright (Amendment) Act 2022.

Through its 14 chapters, this book covers a wide range of topics, from creative ideas and intellectual property to remedies and performers’ rights. The book also examines the copyright position of Artificial Intelligence (AI) and discusses the latest cases up to early 2024. Additionally, it explores exceptions and limitations in light of technological advancements, such as data scraping and text mining, and covers the recent accession and revision to the Marrakesh Treaty. The book provides in-depth analysis of remedies, including statutory damages, and includes updates on the copyright tribunal and collective management organisation.

Whether you are a legal practitioner, an academic, a judicial officer, or an intellectual property agent, this book provides the scholarly insights and practical guidance needed to navigate the evolving landscape of copyright law in Malaysia

Key Features:

• Incorporates the latest cases up to 2024.
• Discusses the latest statutory amendments, including the Copyright (Amendment) Acts 2020 and 2022.
• Examines the copyright position of Artificial Intelligence (AI) in Malaysia, comparing it to the stances of the US, Canada, Australia, UK, European Union, India and Hong Kong.
• Dedicates a new chapter on “Exclusive Rights: Communication to the Public”, covering topics like linking, framing, P2P file sharing, ISP liability, and notice-and-takedown procedures.
• Explores exceptions and limitations on technological advancements, such as data scraping and text mining.
• Covers the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled, and Malaysia's recent accession and revision to it.
• Analyses the latest revisions to remedies, including statutory damages (compensatory and non-compensatory).
• Includes updates on the Copyright Tribunal and collective management organisations.

The introduction of the Trademarks Act 2019 to pave the way for Malaysia to join the Madrid Protocol saw the repeal of the Trade Marks Act 1976. The implementation of the Trademarks Act 2019 is a major change to the Malaysian trademark regime, bringing it in line with the trademark statutes in other major jurisdictions including the UK and Singapore.

This publication, The Annotated Trademarks Act 2019, provides invaluable section-by-section annotations to the Trademarks Act 2019, throwing light on the application and interpretation of the provisions of the Act. It is certainly a resource which will greatly assist in the understanding and application of the new trademark system in Malaysia.

The key terms and phrases in each section are explained by reference to local and foreign case law as well as academic writing. This publication facilitates quick and easy research with the inclusion of cross-reference from the provision being annotated to comparative provisions from other jurisdictions. The annotations should prove to be very useful for lawyers, judges, trademarks agents, court officers and law students.

Written by a legal practitioner with vast knowledge and experience on matters relating to Intellectual Property Law and who was accorded the accolade of the Asialaw Regional Award 2019 for Outstanding Practitioner in Malaysia, there is no doubt this publication will serve as an excellent reference which is insightful, practical and authoritative, enabling a confident understanding of the workings of the Act.

KEY FEATURES:

• Section-by-section annotations to the Trademarks Act written in simple and straightforward style
• Annotations supported by copious citation of case authorities
• Procedural requirements stipulated by the Trademarks Regulations are included to supplement the workings of the Act
• All defined terms are identified with direct cross-references to the provision where each definition is found
• Comparative provisions from Singapore, UK and Australia Trademark statutes are provided where available to aid further research
• Clear page guides assist the user to locate a specific provision or Part of the Act quickly and efficiently
• Supplemented by detailed index for easy access to the annotations
• Includes the full text of the Trademarks Regulations 2019
   

I am confident that the book will surely become an invaluable reference for trademark and the body of law springing forth from the new Trademarks Act 2019 for academicians, practitioners, and members of the judiciary alike.

From the Foreword by Tan Sri Dato’ Sri Azahar bin Mohamed,
Chief Judge of Malaya

KEY FEATURES:

• A revision to the first edition, updating the trademark law as the Trade Marks Act 1976 (“TMA 1976 “) has been repealed and replaced by the Trademarks Act 2019 (“TMA 2019”)
• Useful overview of the law based on the new TMA 2019 including new provisions on non-traditional marks, the Madrid Treaty, the use of trademark as collateral and security, and criminal provisions
• Analysis of case law from the TMA 1976 and their relevance to the provisions of TMA 2019 with concise explanation on important legal principles for application
• Cross-border references wherever possible for added value and comparative understanding
• Case commentary highlights key points and provides insightful legal analysis of the issues that arise in the case
• Comparative analysis of the cases and the law are provided wherever possible

Trademarks Law in Malaysia: Cases and Commentary, Second Edition is a revamped edition from the first book which was published in 2003. It continues to provide a comprehensive overview on the development, economic rationale as well as the role and functions of the trademark system in Malaysia.

The book examines the registrability of trademarks, discusses the issues in trademark registration, explores the process of trademark application, and deals with the issues of trademark infringement as well as passing off. The authors also describe the types of remedies available to a trademark owner in the instance of unlawful use of his trademark, explain the issues on revocation of trademarks and elaborate on the concept of well-known marks.

This updated edition highlights the changes under the new Trademarks Act 2019, repealing the old Trade Marks Act 1976, including the reinforcement that a trademark is a proprietary right, and the criteria of being a well-known trademark under the new Act through decided cases.

Written by two expert authors who are well-acquainted with the subject of trademarks law through academic and practical experience, this book should be a useful reference to legal practitioners, intellectual property consultants, trademark agents, academicians and students, supplementing other materials on the subject of trademark law in Malaysia.

• Analyses the legislative and judicial developments in Malaysian intellectual property law since the first edition of the book.
• Incorporates key developments in the international protection of intellectual property.
• Details the progress of the ASEAN Intellectual Property Cooperation.
• Explains the trademark registration process under the Madrid Protocol.
• Includes new chapters on registered trademark law under the Trademarks Act 2019.
• Discusses the scope of the Copyright (Amendment) Act 2020 and judicial decisions that clarify important copyright principles.
• Highlights the impact of significant patent law decisions handed down by the Federal Court and the Court of Appeal.
• Contains ProView Extra materials available exclusively in ProView eBook only.