Intellectual Property

Symphony Light & Sounds Services Sdn Bhd & Anor v Irwan Shah Bin Abdullah @ D.J Dave & Ors

Kuala Lumpur High Court Suit No.: S-22-1010-2007

Plaintiffs initiated an action against Defendants for allegedly misappropriating their copyright by way of fraud and deception. The subject matters in dispute are proposals entitled “Malaysia’s 50 years an illuminating Journey”. The Plaintiffs alleged that the Defendants had secretly sent the subject matter to the Ministry of Culture, Arts and Heritage.

Plaintiff claims that their concept of “large format lightings, projections and special effects” for the purpose of outdoor audio visual performance is artistic works pursuant to the Malaysian Copyright Act 1987.

The High Court held that Plaintiffs failed to show evidence that such concept is their creation and it is original.

Case dismissed with costs to be taxed.

Download: [Judgement]

AV Future Link Sdn Bhd v Inno Supply & Services Sdn Bhd

Kuala Lumpur High Court Suit Nos. D-22IP-61-2010 & D-22IP-60-2010

1. Plaintiff initiated claim for unlawful interference. Defendant counterclaimed for industrial designs (“ID”) infringement. The ID was obtained vide a deed of assignment from a Chinese company.
2. Plaintiff claims that the Defendant is not the rightful owner of the ID and that the ID had been disclosed before the priority date of the registered ID.
3. The High Court held that the challenge on the deed of assignment was not pleaded hence assignment is valid and the disclosure of ID in China is not relevant as the Malaysian Industrial Designs Act 1996 only recognises disclosure in Malaysia and no evidence is led to show disclosure in Malaysia.

Download: [Judgement]

Shaifubahrim Bin Mohd (as President and Council Member of Persatuan Industri Komputer dan Multimedia Malaysia (PIKOM) and representing all members of PIKOM) v EM Exhibitions (M) Sdn Bhd & Anor

Kuala Lumpur High Court Suit No: D5 – 22IP – 76 – 2010

Plaintiff is the owner of registered trade mark “PC Fair”. The Defendants in this case had used the trade mark “PC Expo” for their computer exhibition.

Plaintiff initiated an action against the Defendants for trade mark infringement, passing off and breach of confidence.

The High Court dismissed the Plaintiff’s action for trade mark infringement and passing off but allowed the action for breach of confidence.

Download: [Judgement]

MDeC To Unveil IP Valuation Model In 2012

By Dalila Abu Bakar and Nur Adila Abd Wahab

CYBERJAYA, Nov 18 (Bernama) – The Multimedia Development Corporation (MDeC) is striving for Intellectual Property (IP) rights to be accepted as assets or collateral through the IP valuation model which is set to be introduced in the first quarter of next year.

MDeC chief operating officer Ng Wan Peng said currently there is no collectively acceptable IP valuation framework which financial institutions can adhere to when processing applications for financial assistance.

She said financial institutions are reluctant to accept IP as assets or collateral because of the difficulty in determining the value of Intellectual Property.

Ng said the introduction of the IP valuation model is the first step taken in assisting financial institutions to refer to a specific methodology in valuing IP rights.

MDeC, the driver of MSC Malaysia’s National ICT Initiative, is working very closely with Intellectual Property Corporation of Malaysia (MyIPO) in getting the necessary approvals for the IP valuation model.

At the 22nd MSC Malaysia Implementation Council Meeting (ICM), organised by MDeC last year and chaired by the Prime Minister, it was decided that MyIPO should formulate an IP valuation model in accordance with the National IP Policy, she said.

Since then MDeC and MyIPO, together with other stakeholders, have been collaborating in preparing an introductory IP valuation framework that looks into the different types of IP rights. MDeC and MyIPO are confident that the framework would be ready and be tested with a few IP owners soon.

“More needs to be done as it is a new area and not many have experience in this. We must start getting the financial institutions to value IP rights as something of high value. Educating and increasing the level of awareness is necessary in order to ensure more people understand and appreciate IP,” Ng told Bernama in an interview.

Ng revealed that hundreds of MSC Malaysia-status small-and-medium enterprises (SMEs) that possess IP rights such as patents, copyrights and trademarks are facing difficulties in getting financial assistance to commercialise their products.

“More than 1,000 SMEs with MSC Malaysia status have IP rights which range from patents to trademarks, copyrights and industrial designs. Not all need financial assistance to commercialise their products but most of them will be happy to have some kind of recognition that the IP created by them actually has value,” she said.

According to Ng, the IP valuation model could serve as a guide for the financial institutions as well as stakeholders in conducting valuation or use it as a basis to get third party valuators to undertake the valuation process.

Ng said IP owners, financial institutions and Bank Negara have provided input for the valuation initiative for the IP. MyIPO together with MDeC had conducted feedback sessions with some financial institutions, industry players as well as IP owners to make them understand this area better as well as share their concerns in the valuation of IP rights.

“We are happy with the cooperation provided by the parties involved in this IP valuation initiative. MyIPO has been working hard in driving this initiative including looking at the amendments of the IP laws to allow the adoption of IP rights as security,” she said.

Although the government has been promoting an innovation and knowledge-based economy, support from financial institutions is not forthcoming as they find it very difficult to accept IP rights as a collateralisable asset.

“I think they are more comfortable in giving out the loan based on business plans on tangible assets or proven business rather than looking at IP as collateral. It’s not that they don’t want to value the IP, the problem is that they don’t know how to value IP rights,” she said.

“We do not see financial institutions keen in readily accepting IP as collateral at this moment. We were told by some companies, most of them SMEs, that they have difficulties in getting banks to recognise their IP rights,” she added.

Ng said the ultimate goal of the IP valuation initiative is for IP rights to be recognised by financial institutions as an asset that can be put up as collateral.

“These are also opportunities for the banks. Financial institutions have to start developing capability in these areas as more and more companies will have less and less tangible assets. In becoming more competitive, financial institutions would need to know how to value intangible assets and put a defensible value that can mitigate the perceived risk attached to assets such as IP.

“Eventually, we hope that local companies will continue to create IP which will be accepted as an asset that can be transacted and thus help increase our competitiveness as a nation,” she said.


Kuang Pei San Food Producs Public Company Limited v Wes Marketing Co Sdn Bhd (No 2)

Sabah and Sarawak High Court Suit No. S22-231-2009-III

Trade mark infringement, passing off and copyright infringement of the brand SMILING FISH. Plaintiff succeeded in trade mark and copyright infringement but not passing off due to failure to prove damage.

Judgement: [Download]

B.Braun Melsungen AG & Anor v Meds Sdn Bhd & Ors

Kuala Lumpur High Court Suit No. D – 22IP – 23 – 2011

Patent infringement – interlocutory injunction – whether claim of invalidation is a serious issue to be tried – whether balance of convenience lies on the Plaintiff due to damage to goodwill and reputation – whether the Defendants, being new in the market and having a small market share, should be restrained.

Download: [Judgement]

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