Survey Relating to Compounding Regulations

The Malaysia Personal Data Protection Commissioner Office wishes to enforce compounding regulations pursuant to the Personal Data Protection Act 2010. They have now issued a survey for the members of the public and organisations.

Any response to the survey should be submitted before 14 November 2014. For more details, go to www.pdp.gov.my

Download: Survey Form (in Malay language only)

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Retirement of Haji Abu Hassan Ismail

With the retirement of Haji Abu Hassan Ismail as the Director General of the Personal Data Protection Department, Encik Mazmalek bin Mohamad has been appointed as the new Director General of the Personal Data Protection Department effective from 1st October 2014.

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Guidelines On Taxation of Electronic Commerce

In early 2013, the Inland Revenue Board (IRB) of Malaysia’s issued a guideline on how income derived from e-commerce is to be taxed. This guideline seeks to provide some guidance on basic tax issues and income tax treatment in respect of electronic commerce (e-commerce) transactions.

Notably, the IRB stated that a server / website itself do not carry any meaning in determining derivation of income. Business income from e-commerce would be considered as Malaysian income if the operations test shows that the person is carrying on a business in Malaysia. Even though the server is fully automated in performing business activities, the substantial part of the business activities such as updating and maintaining the current information on the website is still managed by a human (Paragraph 5.1). For more details, please visit Digital News Asia.

The Royal Malaysian Customs (RMC) also released the GST Guides on E-Commerce and Web Hosting to assist in understanding the upcoming Goods and Services Tax and its implications on e-commerce and web hosting businesses.

Under an e-commerce transaction, the RMC stated that if a business is supplying goods or services in Malaysia via the Internet, the business is accountable for the collection of GST as in conventional commerce. This also applies regardless that the transactions are done through a third party e-commerce service provider (e.g. web hosting company).

As for web hosting business, all provisions of services whether it originates in the country or imported from other countries are under the scope of GST. The principal rule with regards to place of supply for services provided by web host is where the supplier belongs. In this context, if the supplier of web host services belongs to Malaysia, such services have to be standard rate. On the other hand if the supplier belongs to another country, the supply of service is out of scope. However, if the recipient of the services provided by overseas supplier belongs to Malaysia, the imported service will be subjected to GST.

Download
Inland Revenue Board – Guidelines On Taxation of Electronic Commerce
Royal Malaysian Customs – Goods and Services Tax – Guide on E-Commerce
Royal Malaysian Customs – Goods and Services Tax – Guide on Web Hosting Services

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Malaysian Bar releases feedback to Personal Data Protection Commissioner’s Proposal Papers

On behest of the Malaysian Bar Ad Hoc Committee for the Personal Data Protection Act, the Malaysian Bar has published the feedback by Ad Hoc Committee on Personal Data Protection to Personal Data Protection Commissioner’s following proposal papers.

1) Guideline on Compliance of Personal Data Protection Act 2010;
2) Guide on the Management of Employee Act Data under Personal Data Protection Act 2010;
3) Advisory Guideline related to Consent requirement under the Personal Data Protection Act 2010; and
4) Guide on Management of CCTV under Personal Data Protection Act 2010.

Download the feedback.

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Battle of the Satay Celup Restaurants


Ban Lee Siang restaurants – used with permission of sixthseal.com

Ban Lee Siang is a well known satay celup restaurant in Melaka. It consists of two adjoining shops operated by two different owners who are brothers. The shop was started by their other brother in 1987.

Although both restaurants are named “Ban Lee Siang”, they are both known as Restoran Makanan and Minuman Ban Lee Siang and Restoran Ban Lee Siang. The former was taken over by the Plaintiff in 1997 and the latter was started by the Defendant in 2004.

In 2012, the Plaintiff filed a lawsuit against the Defendant over the use of the name Ban Lee Siang. The Plaintiff alleged that he is the exclusive and registered proprietor whereas the Defendant is merely a licensee. The Plaintiff terminated the licence via a letter.


The Plaintiff’s registered trade mark

However, the Defendant alleged that he is a joint proprietor of the trade mark as he had purchased the business jointly with the Plaintiff and their mother.

The High Court held that:-

1. Based on the evidence provided, the trade mark BAN LEE SIANG was not only sold to the Plaintiff but also to the Defendant and their mother (paragraph 15);
2. The Defendant is a honest concurrent user (pursuant to s. 40(c) of the Trade Marks Act 1976 (TMA)) but also entitled to file an application under s. 20 of the TMA to be a joint proprietor (paragraph 16); and
3. Since the Plaintiff did not object to the use of the trade mark from the date of establishment of the Defendant’s restaurant until the date of the letter terminating the alleged licence, this shows that the Plaintiff had indeed allowed the use of the trade mark. Thus, following s. 40(c) and (dd) of the TMA, there is no trade mark infringement (paragraph 17).

Download: Chua Cheng Kiat b/s Kedai Makanan dan Minuman Ban Lee Siang v Chua Cheng Ho b/s Restoran Ban Lee Siang

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Bread & Kaya: Liking a Facebook page and the law

Bread & Kaya: Liking a Facebook page and the law

Foong Cheng Leong
Aug 14, 2014

- ‘Liking’ a page doesn’t necessary mean you agree with it
– Using Sedition Act for what you ‘Like’ sets dangerous precedent

THE recent report that Malaysian police are investigating a Penang teenager under the Sedition Act 1948 for liking the ‘I love Israel’ Facebook page has raised more than a few eyebrows.

This leads to some interesting questions: What does liking a Facebook page mean? Does it mean liking the idea that is expressed by the Facebook page? In the above case, does this mean that the teenager actually loves Israel?

To answer this, we first refer to Facebook’s definition of ‘Like.

What’s the difference between liking a Page and liking a post from a friend?

Liking a Page means you’re connecting to that Page. Liking a post from a friend means you’re letting that friend know you like their post without leaving a comment.

When you connect to a Page, you’ll start to see stories from that Page in your News Feed. The Page will also appear on your profile, and you’ll appear on the Page as a person who likes that Page.

Further, in the US case of Bland v. Roberts, No. 12-1671 (4th Cir. Sept. 18, 2013, click here for the PDF), the Court held that:

On the most basic level, clicking on the ‘Like’ button literally causes to be published the statement that the User ‘Likes’ something, which is itself a substantive statement. In the context of a political campaign’s Facebook page, the meaning that the user approves of the candidacy whose page is being liked is unmistakable. That a user may use a single mouse click to produce that message that he Likes the page instead of typing the same message with several individual key strokes is of no constitutional significance.

This is a US case thus it is not applicable to us, and Facebook’s definition may not be relevant here. So far, we have no reported case in Malaysia of the legal implications of Liking a Facebook page.

To me, when a person Likes a certain page, it doesn’t necessary mean he or she ‘likes’ what the page represents. I may ‘Like’ a page to ‘get the stories from that Page in my News Feed.’ I sometimes Like a page to support a friend who started such page, but that does not mean I like his postings or expressions there. I’m sure many of us here use the Facebook ‘Like’ button differently.

To charge the teenager for sedition for Liking the ‘I Love Israel’ Facebook page is a dangerous precedent. Each Facebook user would have to be very careful on the Facebook page they Like. Those who are oblivious to current affairs would be most vulnerable.

Furthermore, the name of a Facebook page can be changed. Imagine if someone changes a Facebook page in open support of child pornography, and those who had previously Liked the page seem to suddenly like child pornography!

(Note: No approval is required to change the name of a Facebook Page with fewer than 200 members).


First published on Digital News Asia on 14 August 2014

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Unknown Caribbean company files for MH17 trademark

I was quoted by Digital News Asia in their article “Unknown Caribbean company files for MH17 trademark” published on 22 July 2014.



Unknown Caribbean company files for MH17 trademark
Gabey Goh
Jul 22, 2014

- Trademark applications filed for ‘MH17′ & ‘MH370′ for use in EU
– Case of companies or individuals using trademark register to take advantage of a tragedy

IN THE wake of the MH17 tragedy, reports have already surfaced about cybercriminals taking advantage with fake Facebook pages being created in the name of victims, for money.

Now it appears opportunism has reared its ugly head in another way – Digital News Asia (DNA) has learnt that claims have been filed to trademark the terms ‘MH17′ and ‘MH370.’

MH370 was the number of the Malaysian Airlines flight that inexplicably disappeared on March 8, remaining one of the aviation industry’s greatest mysteries. The Beijing-bound flight from Kuala Lumpur was carrying 12 crew members and 227 passengers, the majority of whom were China nationals. The search and rescue operation has yet to find remains of the craft.

Malaysia’s national carrier, already reeling from that disaster and a disappointing financial year, then experienced another disaster when Flight MH17 from Amsterdam to Kuala Lumpur was shot down over Ukrainian airspace on July 17, killing all 283 passengers and 15 crew on board.

Details of the ‘MH17′ filing, submitted on July 17 itself, were found on the European Trade Mark and Design Network website and the application under examination. The ‘MH370′ filing submitted on May 2 was found on the Justia Trademarks site, and according to the site, has yet to be assigned a case examiner.

According to available details, the same company, Seyefull Investments Limited which is incorporated in Belize City, filed both applications.

Belize City is the largest city in the Central American country of Belize and was once the capital of the former British Honduras. It is located at the mouth of the Belize River on the coast of the Caribbean.

The scope of usages listed within both applications is wide ranging: From conferences, exhibitions and competitions; to education and instruction, and entertainment services (namely, the provision of continuing programmes, segments, movies, and shows delivered by television, radio, satellite and the Internet).

DNA columnist and intellectual property lawyer Foong Cheng Leong (pic) noted that trademark rights are limited to the goods and services chosen by the proprietor.

“Here, the applicant is registering the mark MH17 for all sorts of products in the European Union. By being the registered proprietor, they have the rights over the mark [when it comes to] the registered goods and services in the European Union.

“They may stop people from using the mark or ask for payment in the European Union,” he added.

Asked whether these trademark claims were the groundwork for potential ‘trademark trolling’ efforts, Foong said that he would not be able to determine whether they are trademark trolls without a deep investigation into the entity in question.

‘Trademark troll’ is a pejorative term for any entity that attempts to register a trademark without intending to use it, and who then threatens to sue others who use that mark.

It is a different beast from a ‘patent troll,’ also called a patent assertion entity (PAE), a person or company who enforces patent rights against accused infringers in an attempt to collect licensing fees, but does not manufacture products or supply services based upon the patents in question, thus engaging in ‘economic rent-seeking.’

Claiming a stake in crisis

This is not the first time an attempt has been made to claim the intellectual property associated with a global event. Among the most notable was when a businessman named Moti Shniberg tried to trademark the term ‘September 11, 2001′ … on the day itself.

Shniberg said he had filed for the trademark for “charitable purposes,” but the US Patent and Trademark Office ultimately rejected the application. It was one of about two dozen reportedly filed trademarks related to the Sept 11, 2001 terrorist attacks in the United States.

Lawyers and trademark industry watchers DNA spoke to for this article noted that it is quite common for people to file trademarks based on words related to current affairs.

A trademark industry observer, who asked not to be named, said that such filings are “fairly common, but also fairly pointless” because they usually get rejected and lead to bad public relations for the people or company which filed the trademark, as well as for the trademark industry as a whole.

He said that the case in question was “another sign of companies or individuals taking advantage of tragedies using the trademark register.”

“I don’t know the reason for these, it’s probably opportunistic from what I can tell – the fact the MH17 one was filed on Thursday definitely suggests that.

“My guess would be it’s a shell company of some kind. The company’s other trademark is for ‘Mata Hara 308‘, which appears to be linked to this website which mentions MH370, and has the same image for its browser tab as the Seyefull website, so I think they’re linked.” he added.

Asked whether Malaysia Airlines (MAS) should be concerned about such moves, he pointed to another filing made by Aoan International Pty Ltd to register an Australian trademark for ‘MH370′ in March that is due to be accepted on July 30.

“However, it seems that Malaysia Airlines is concerned about this kind of thing because 10 days ago, [Malaysia Airlines] itself registered a trademark in Australia for ‘MH370′,” he said.

Additional checks also found that MAS had filed its own Community Trade Mark application for ‘MH17.’ However, this was made on July 21, a few days after the application made by Seyefull.

“I do not know why [Malaysia Airlines] filed, but it may have been alerted by the company’s application or is trying to block others from registering the mark,” said Foong.

A corporate lawyer who also declined to be named for this article said that to her knowledge, there are corporates and individuals “who more often than not, seize the opportunity to register certain names when they sense the potential in future commercial exploitation.”

“Apart from applications for registration of a trademark, another area is the registration of domain names. The name ‘everyone can fly’ and ‘airasia’ have been rampantly applied by different individuals from all over the world,” she said.

She noted that at first glance, the most obvious reason why one would want to register ‘MH370′ and ‘MH17′ now is probably due to the potential of these events being made into movies or books.

“However, one should also question whether they infringe the rights owned by MAS in applying to register such a mark in the first place.

“Usually, the Registrar would not allow registration should it feel that this infringes the existing rights of another party. MAS still retains the common law proprietary rights in the mark,” she added.

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BFM Podcast: Revenge Porn

I was interviewed by BFM Radio to talk about revenge porn on 22 July 2014.



The availability of affordable smartphones and cheap mobile data are contributing to the rise of sextortion, the non-consensual publication online of explicit images, often by a former spouse or partner after a relationship turned sour. Does ownership of an image lie with the sender or receiver? And what legal framework is in place to address this growing concern?



Related Link: The Perils of “Revenge Porn” – Part 2

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