Changes in Malaysia – The Copyright (Amendment) Bill 2021, Patents (Amendment) Bill 2021 and Geographical Indications Bill 2021
Wendy Lee Wan Chieh, Shook Lin & Bok (Malaysia)
After a brief hiatus on the IP front, the Malaysian Dewan Rakyat passed the Copyright (Amendment) Bill 2021, Patents (Amendment) Bill 2021 and Geographical Indications Bill 2021 in quick succession in December 2021.
Copyright (Amendment) Bill 2021 (“Copyright Bill”)
The Copyright Bill introduces amendments to the Copyright Act 1987 which aim to strengthen provisions relating to the enforcement of copyright, especially in the digital environment, and to comply with standards required by, amongst others, the Marrakesh Treaty.
Most significant is, perhaps, the making of the infringement or facilitation of infringement of copyrighted work via streaming technology an offence. This is timely, given the rise of streamed content and streaming platforms such as Netflix, Amazon Prime Video and Disney+ in recent years whose content have, thus far, been rather difficult to protect due to the fluid and largely anonymous nature of the internet and the continuous change in methods with which access may be gained to such content.
In addition to that, the liability for offenders will be increased to a fine between RM 10,000.00 to RM 200,000, imprisonment of up to 20 years, or both, and enforcement powers will be expanded to ensure more effective and efficient action against infringers.
Patents (Amendment) Bill 2021 (“Patents Bill”)
In a greatly welcomed move, the Patents Bill seeks to introduce opposition proceedings under which any interested person (including the Federal and State government) may commence opposition proceedings by filing a notice of opposition against a patent owner before the Patents Office.
The Patents Bill also introduces a procedure to deposit micro-organisms as a part of the patent disclosure procedure in compliance with the Budapest Treaty, which is consistent with the proposal for Malaysia to soon become a member of the Budapest Treaty.
It will be possible for a patent to be dealt with as a security interest once the amendments introduced by the Patents Bill come into force, with patents being recognised as personal property or movable property capable of being the subject of security interest. Security interest transactions and notices of trust will also be recordable with the Patents Office.
Section 88(2) of the Patents Act 1983 which stipulates that an appeal in respect of any decision of the Registrar shall be treated as an appeal from the subordinate court to the High Court will be deleted. This amendment, in essence, indicates that an appeal from a decision of the Registrar to the High Court will no longer be treated as an appeal from the subordinate court to the High Court. This is significant, as it should enable such appeals to be heard by the apex court.
In addition to that, the limitation period of 5 years for proceedings for patent infringement will be extended to 6 years, which makes the limitation period of patent infringement consistent with that for many other causes of action in Malaysia.
Geographical Indications Bill 2021 (“GI Bill”)
The GI Bill will replace the Geographical Indications Act 2000 when it comes into force and will cater for the protection and registration of geographical indications in relation to products. It will also align legislation with the current needs of the trading community and Malaysia’s commitments in the Regional Comprehensive Economic Partnership (RCEP) the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP).
Registration of variants of a geographical indication as well as the protection of homonymous indications in relation to an earlier geographical indication will be available.
As before, examinations will be conducted by the Registrar of Geographical Indications before a geographical indication is registered but the grounds of refusal and grounds of opposition will be expanded. Cancellation proceedings for a registered geographical indication before the Court will also be available for the first time once the GI Bill comes into force.