Intellectual Property

Withholding Tax Exemption on Payment to Non Residents For Technical Advice, Assistance, etc

The Minister of Finance has granted withholding tax exemption (WHT) on payments to non-residents that fall within Section 4A(i) and (ii) of the Income Tax Act in respect of offshore services via the Income Tax (Exemption) (No. 9) Order 2017.

In effect this reverts to the previous position, such that intellectual property services (such as trade mark, industrial designs and patent registrations) provided and performed from 6 September 2017 by a foreign intellectual property agent outside of Malaysia will be exempt from WHT.

BFM Podcast: LANDMARK #4: FACEBOOK

Subsequent to my update on the Malaysian 2016 cyberlaw cases, I was interviewed by BFM Radio to talk about general laws applicable to social media in Malaysia on 13 April 2017. I also covered the rules applicable to your digital data after your death and how to manage them in preparation of your death.


Who owns the pictures you post on Facebook? Can comments you post on Facebook be used against you in court, even after it is deleted? How is defamation defined on social media? On this episode of Landmark, a series exploring how the law shapes society and vice versa, lawyer Foong Cheng Leong talks us through recent rulings involving the social media platform and explains where the law currently stands when it comes to Facebook.

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

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.

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

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.

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.

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

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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