Intellectual Property

Don’t be penny-wise, startups: lawyers

I gave on a talk on Intellectual Property Law for Startup at a firechat sessions titled “Bridge the Gap between Startups and the Law” organised by BurgieLaw held at the Malaysian Global Innovation and Creativity Centre (MaGIC) on 9 May 2016.

Subsequent to the firechat session, I was featured in The Star in their article “Don’t be penny-wise, startups: lawyers“. An extract of the article produce below:-

Intellectual Property lawyer Foong Cheng Leong said he often got queries from startups on how to protect their ideas.

“It’s usually quite reasonable, but sometimes they try to protect things that can’t be protected,” he said, adding that abstract ideas and business concepts could not be shielded with a patent.

He advised companies to research what they expected from a lawyer, as well as the lawyer’s credentials, before arranging a meeting. This would ensure the lawyer had the correct skill sets.

He noted that many local lawyers were geared to common transactions like property and sale and purchase agreements, and not many had explored tech-related laws.

With 11 years in the industry, Foong said he had seen his share of cases where businesses try to D-I-Y and drafted their contracts without going to a lawyer, only to end up going to a lawyer anyway after things went wrong.

He said while filing a trademark costs around from RM2,000, going to court over a logo or brand name dispute could easily cost more than RM100,000 and take between nine months and a year.

Sometimes running lean also means not being penny-wise and pound-foolish.

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Compendium of Intellectual Property Cases – Copyright and Industrial Designs Volume 2

I am pleased to announce that the second volume of the Compendium of Intellectual Property Cases had been published by LexisNexis. This volume covers Malaysian copyright and industrial designs cases.

It contains more than 50 reported and unreported cases on copyright and industrial designs from the Malaysian Sessions Court, High Court, Court of Appeal and Federal Court.

To assist readers, the cases are summarised in a form a catchwords and an index has been prepared to categorise the cases.

The cases have been divided into sections: copyright infringement, criminal offences, industrial design infringement, rectification of registered industrial design. The cases also covers other issues such as non-compliance of contempt, licensing, interlocutory injunction, software copyright, in these intellectual property cases. Many of these judgements are not published by the local law journals and they contain many important points of laws.

You can get a copy from LexisNexis at their website (click here). For the first volume, you can purchase it from here

List of featured cases:-

Acumen Marketing Sdn Bhd & Anor v Putrajaya Holdings Sdn Bhd & 5 Ors (2016) 2 MYIPC 29
Admal Sdn Bhd v The New Straits Times Press (Malaysia) Sdn Bhd & Anor (2016) 2 MYIPC 148
Alpha Home Appliance Sdn Bhd v NSB Home Appliance & Anor (2016) 2 MYIPC 541
Alarm & Automation Supplies (M) Sdn Bhd v Control Point Technology Sdn Bhd & Ors (2016) 2 MYIPC 434
Anchorsol Sdn Bhd v Nehemiah Reinforced Soil Sdn Bhd (2016) 2 MYIPC 470
Aresni-Marley (M) Sdn Bhd v Middy Industries Sdn Bhd (No 1) (2016) 2 MYIPC 522
AV Future Link Sdn Bhd v Inno Supply & Services Sdn Bhd (2016) 2 MYIPC 529
Borneo Rainforest Lodge v Bernama-Malaysian National News Agency (2016) 2 MYIPC 465
Cheah Shuang Ho v Public Prosecutor (2016) 2 MYIPC 313
Chong Kak Hau v Public Prosecutor (2016) 2 MYIPC 324
DF Electronics Sdn Bhd & Anor v Teras Ekonomi Sdn Bhd (2016) 2 MYIPC 82
Dura-Mine Sdn Bhd v Elster Metering Limited & Anor (No 1) (2016) 2 MYIPC 189
Dura-Mine Sdn Bhd v Elster Metering Limited & Anor (No 2) (2016) 2 MYIPC 261
Elster Metering Limited & Anor v Damini Corporation Sdn Bhd (2016) 2 MYIPC 103
Elster Metering Limited & Anor v Dura-Mine Sdn Bhd (2016) 2 MYIPC 39
EOneNet.com Sdn Bhd v Lee Chye Yen & 1 Lagi (2016) 2 MYIPC 220
F & N Dairies (Malaysia) Sdn Bhd v Tropicana Products, Inc (2016) 2 MYIPC 485
Genesis Force Sdn Bhd v Sarawak Coal Resources Sdn Bhd & 2 Ors (2016) 2 MYIPC 116
John Kenneth v Naim Land Sdn Bhd (2016) 2 MYIPC 456
Kohwai & Young Publication (M) Sdn Bhd v Lembaga Pengelda Dewan Bahasa and Pustaka (2016) 2 MYIPC 53
Kean Beng Lee Industries (M) Sdn Bhd v Gafri (M) Sdn Bhd & Ors (2016) 2 MYIPC 561
Lee Chye Yen & 1 Lagi v EOneNet.com Sdn Bhd (2016) 2 MYIPC 235
MediaCorp News Pte Ltd & Ors v MediaBanc (Johor Bahru) Sdn Bhd & Ors (2016) 2 MYIPC 431
Microsoft Corporation v Conquest Computer Centre Sdn Bhd (2016) 2 MYIPC 242
Middy Industries & 2 Ors v Aresni-Marley (M) Sdn Bhd (2016) 2 MYIPC 553
MTV Production (M) Sdn Bhd v Winner Music Production Sdn Bhd & 2 Ors (2016) 2 MYIPC 1
Music Authors’ Copyright Protection (MACP) Bhd v A’Famosa Water Theme Park Sdn Bhd (2016) 2 MYIPC 429
Music Authors’ Copyright Protection (MACP) Bhd v Bandar Utama City Sdn Bhd & Ors (2016) 2 MYIPC 453
Ng Beng Huat v Public Prosecutor (2016) 2 MYIPC 393
Onestop Software Solutions (M) Sdn Bhd & Anor v Masteritec Sdn Bhd & 2 Ors (2016) 2 MYIPC 302
Petraware Solutions Sdn Bhd & Anor v Readsoft Aktiebolag & Anor (2016) 2 MYIPC 211
Plastech Industrial Systems Sdn Bhd v N&C Resources Sdn Bhd & Ors (No 1) (2016) 2 MYIPC 440
Plastech Industrial Systems Sdn Bhd v N&C Resources Sdn Bhd & Ors (No 2) (2016) 2 MYIPC 443
Power-Sys Solutions Sdn Bhd & Anor v Amway (Malaysia) Sdn Bhd & Anor (2016) 2 MYIPC 459
Public Performance Malaysia Sdn Bhd & Anor v PRISM Berhad (2016) 2 MYIPC 276
Public Prosecutor v Chan Chun Tat (2016) 2 MYIPC 419
Public Prosecutor v Daniel Dean (2016) 2 MYIPC 339
Public Prosecutor v Loo Hock Eng (2016) 2 MYIPC 348
Public Prosecutor v Sarawanan (2016) 2 MYIPC 353
Public Prosecutor v Sih Swee Peng (2016) 2 MYIPC 381
Public Prosecutor v Sim Kean Aun (2016) 2 MYIPC 358
Public Prosecutor v Tan Chien Hou (2016) 2 MYIPC 398
Public Prosecutor v Teh Lee Ling (2016) 2 MYIPC 408
Public Prosecutor v Than Soe & Ors (2016) 2 MYIPC 367
Public Prosecutor v Yong Mei Khoon Dan Seorang Lagi (2016) 2 MYIPC 378
Radion Trading Sdn Bhd v Sin Besteam Equipment Sdn Bhd & Ors (2016) 2 MYIPC 60
Readsoft Aktiebolag & Anor v Petraware Solutions Sdn Bhd & Anor (2016) 2 MYIPC 167
Rock Records & Tapes Co Ltd v Season Karaoke Sdn Bhd & 3 Ors (2016) 2 MYIPC 292
Sherinna Nur Elena Bt Abdullah v Kent Well Edar Sdn Bhd (2016) 2 MYIPC 137
Symphony Light & Sounds Services Sdn Bhd & Anor v Irwan Shah Bin Abdullah @ DJ Dave & Ors (2016) 2 MYIPC 143
The New Straits Times Press (Malaysia) Sdn Bhd & Anor v Admal Sdn Bhd (2016) 2 MYIPC 198
Ultra Dimension Sdn Bhd v American Home Assurance Company & Anor (2016) 2 MYIPC 7
Ultra Dimension Sdn Bhd v Ketua Pengarah Lembaga Penggalakan Pelancongan Malaysia & 2 Ors (2016) 2 MYIPC 75
Veresdale Ltd v Doerwyn Ltd (2016) 2 MYIPC 563
World Express Mapping Sdn Bhd v Aim Advertising Sdn Bhd & Anor (2016) 2 MYIPC 13
World Express Mapping Sdn Bhd v THR Hotel (Johor) Sdn Bhd & Anor (2016) 2 MYIPC 21

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BFM Podcast: CAN EMOTIONS BE COPYRIGHTED?

I was interviewed by BFM Radio to talk about illegal downloading of music, songs etc by internet users and the podcast was published on 28 March 2016.

Read: Pharrell Williams, et al. v. Bridgeport Music, Inc., et al.


In 2013, the family of Marvin Gaye sued Robin Thicke, Pharrell and their label Universal for copyright infringement in a little song called “Blurred Lines.” It was alleged that the song veered too similar in vibe to Gaye’s 1977 track “Got to Give It Up.” Last December, Gaye’s estate won and was awarded the largest damages in music copyright history. Pharrell, Thicke and Universal have since filed an appeal this month. Intellectual property lawyer Foong Cheng Leong explains how much of a song can be copyrighted.

Your browser does not support native audio, but you can download this MP3 to listen on your device.

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BFM Podcast: Suing Illegal Downloaders

I was interviewed by BFM Radio to talk about illegal downloading of music, songs etc by internet users on 13 April 2015.


The makers of Dallas Buyers Club, the award winning movie starring Matthew McConaughey and Jared Leto, have been aggressively going after online pirates in the United States, Australia and now, Singapore. What set their legal strategy apart from similar efforts in the past, what are the implications for privacy rights, and will internet service providers in Malaysia have to surrender subscribers’ information as well if they extend their litigation to our shores? Intellectual property and privacy rights lawyer Foong Cheng Leong explains.

Your browser does not support native audio, but you can download this MP3 to listen on your device.

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Proposed Trade Marks And Patents (Including Utility Innovations) Fees Revision

The Intellectual Property Corporation of Malaysia (MyIPO) is proposing to increase the filing fees of numerous applications in respect of trade mark and patents (including utility innovations) applications. The reason for the increase is due to “The escalating costs of upgrading the ICT system“.

The revision introduces the waiver of certain patents searching fees (online) and the reduction of certain fees for trade marks and patents. Meanwhile for certain patents and trade marks fees, an increase at an average of 5% to 50% is also proposed.

The most notable change for trade mark filing is the combination of application and advertisements fees (proposed rate of RM990 for efiling). The current fees structure requires applicants to pay the application fee (RM330 for efiling) and upon approval, the advertisement fees must be paid (RM600 for efiling). There is no indication as to whether the advertisement fees will be refunded if the application is not accepted.

I do not know whether this proposal will be rolled out and when it will be rolled out.

For more details, please see Consultation Paper – Proposed Trade Marks And Patents (Including Utility Innovations) Fees Revision

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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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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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New Chinese Trademark Law to be implemented on May 1, 2014

Published with permission of Eagle IP Ltd, a Hong Kong and Chinese IP Firm.

The Chinese Government announced that the 3rd amendment to the 1982 Trademark Law, passed by the 12th meeting of The Standing Committee of the National People’s Congress, will be implemented as of May 1, 2014.

Below are some major highlights:

Multi-class applications
At present, multi-class application is not available. Under the new Trademark Law, applicants who wish to obtain protection for a trademark in more than one class is required to file multiple applications with the Chinese Trademark Office.

Multi-class applications will likely decrease application costs for companies with diversified business and need to protect their marks on a wide range of goods and/or services.

Sound marks will be registerable
The existing Trademark Law only provides for the registration of words, figures, letters, numerals, color combinations, 3-D symbols and any combination of the above. The amendment allows registration of sound marks.
Cell phone manufacturers, software companies and entertainment companies such as Sony Mobile, Microsoft, Twentieth Century Fox are likely to benefit from the new provision.

Time limit on examination procedures
Lengthy application process is a flaw known well to both applicants in China and abroad. The new Chinese trademark law set the time limit for preliminary examination from filing to publication to 9 months. The stipulated time limit for the Trademark Review and Adjudication Board to make a decision regarding a trademark review case of trademark rejection is also set at 9 months. The examination period for making a decision regarding an opposition case is 12 months. Time limit for examination might be extended by no more than 6 months only under exceptional circumstance with the approval of the relevant officials.
This means the trademark application process is expected to be shortened considerably.

Prior use of a trademark will be considered
Currently, China adopts first-to-file principle. This means a trademark that has successfully registered will defeat a trademark that has long been in use in China for a longer time but has not obtained registration.
Under the 3rd amendment, prior use of a mark will be recognized. Provided that a trademark has been in use in China for a long period of time and has established reputation, the trademark owner will be allowed to continue to use the mark within the original scope.

Increased protection against bad faith registration
The existing Trademark Law only prohibits bad faith registration of a trademark by agents and representatives of a trademark owner. The new Trademark Law now stipulates that any party who has commercial or contractual relationship with the trademark owner is prohibited from registering a trademark in bad faith if opposed by the owner.

Well-known trademark
Ever since “Well-Known trademark” protection is introduced in China in 2001, Chinese companies are very keen on trying every possible way to have their trademarks declared “Well-known”. “Well-Known trademark” has become a means of advertising and sales promotion. The new Trademark Law prohibits companies from putting the words “Well-Known trademark” on the packaging of their products. It also stops use of such status in advertising, exhibition and commercial activities.

Increased damages for trademark infringement
Under the current Trademark Law, the maximum statutory damages for trademark infringement are RMB 500,000. The new Trademark Law pushes the ceiling up six-fold to RMB 3,000,000. Punitive damages are also introduced where the trademark infringement is intentional and has serious consequences.

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