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28 October, 2017
Former US president Barack Obama envisioned that the TPPA would:
“promote economic growth; support the creation and retention of jobs; enhance innovation, productivity and competitiveness; raise living standards; reduce poverty in the signatories’ countries; and promote transparency, good governance, and enhanced labour and environmental protections.”[1]
The 12 countries that made up the TPPA have a collective population of about 800 million, and are presently responsible for over 40% of the world’s trade[2]. The TPPA was supposed to be one of the most remarkable trade achievements amongst Pacific nations, given the very different approaches and standards within the member countries on issues such as environmental protection, workers’ rights, intellectual property rights and others.
Today, however, the TPPA stands non-ratified following America’s withdrawal from the agreement on 23 January 2017, in accordance with the policies of the new Trump administration.
Given the significance of the Intellectual Property (“IP”) Chapter in the TPPA, America’s withdrawal leads to the question of whether the IP landscapes of the remaining 11 member countries will see any adverse effect from the failure of the TPPA.
Amongst others, the IP Chapter was set to lay down the path towards the new gold standard for IP protection in preferential trade agreements. Seeking to dismantle behind-the-border trade restrictions and foster regulatory coherence, the TPPA required the ratifying members to amend and update their IP laws to be on par with the more developed jurisdictions and in line with a number of international IP treaties and trade agreements.
Where does Malaysia stand?
Malaysia was one of the 12 countries to sign the TPPA on 4 February 2016. While the fate of the TPPA remains uncertain, nevertheless, on the IP front, Malaysia has pledged to carry on with its commitment to update its different domestic IP legislation to facilitate trade and fulfil Malaysia’s international obligations[3].
In doing so, the Malaysian IP Office (“MyIPO”) has been working towards acceding to some of the agreements required under the TPPA, including the Madrid Protocol, the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure,the International Convention for the Protection of New Varieties of Plants, the Singapore Treaty, theWIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.
Malaysian IP legislation is slated to be updated as part of the preparations, namely, the Trade Marks Act 1976, the Geographical Indications Act 2000, the Copyright Act 1987, the Industrial Designs Act 1996 and the Patents Act 1983.
Trademarks
With the amendment to the Trade Marks Act 1976 (“Trade Marks Act”), it is anticipated that brand owners will enjoy broader protection, including for non-conventional marks such as shape, sound and scent marks. At present, the Trade Marks Act defines use of a mark to include only “use of a printed or other visual representation of the mark”. With the recognition of shape, sound and scent marks, Malaysia will be on par with other jurisdictions such as Singapore, USA and Europe.
Collective marks will also be introduced and will be of particular interest to organisations from the accountancy, legal, medical and other relevant industries. With the amendments to the provisions on infringement, trade mark owners will be able to commence action against infringers for goods that are simply related to that claimed under a registered mark, and not necessarily for identical or similar goods alone. Another anticipated major amendment is that it will no longer be necessary to record a licence in order to have the licence recognised and deemed valid.
Copyright
A number of amendments are also being introduced to the Copyright Act 1987 (“Copyright Act”), the most important being the duration of copyright protection which is now being extended from the current 50 years to 70 years after the creator’s death.
Other amendments to the Copyright Act may include changes to the provisions on Internet service providers (“ISPs”), wherein ISPs will now play the role of “internet police”. This may be made possible with changes to the definition of a “service provider” in the Act. With these amendments, the Government will also have to provide legal incentives for the ISPs to expeditiously remove content deemed as infringing material.
Industrial designs[4]
Amongst others, by virtue of the proposed amendments to the Industrial Designs Act 1996(“Industrial Designs Act”), protection for industrial designs will be extended to cover designs which are embodied in a part of an article or to form a part of an article in the context of the article as a whole. Essentially, the amendments would seek to maintain the literal interpretation of an “article” which seemingly removes the present “must-fit-must-match” exclusions in the Industrial Designs Act, which has been a subject of debate in the past.
The Industrial Designs Act already allows an extension of duration of protection to 25 years, which makes it readily fully compliant with TPPA obligations on this aspect.
Geographical indications
The amendments to the Geographical Indications Act 2000 (“Geographical Indications Act”) will introduce new grounds of opposition that third parties may rely on when opposing geographical indication applications. New grounds for cancellation of registered geographical indications have also been included in the proposed amendments.
Previously, the Geographical Indications Act was silent on the “term customary in the common language”. With the amendments, guidelines have been introduced to determine whether a term is indeed “customary in the common language”.
Patents[5]
Amendments to the Patents Act 1983 (“Patents Act”), amongst others, will extend patent protection to include new uses of a known product, new methods of using a known product, as well as new processes of using a known product. This amendment will be of particular interest to pharmaceutical companies seeking second medical use of a known drug. With the above changes, a patent linkage system will be introduced, by way of a Ministry of Health notification to the applicable patent holder.
Changes will also be made to provisions on patent term, which includes an adjustment to the patent term to compensate for any unreasonable delay on the part of the Patent Office in patent prosecution.
Other changes to the Patents Act will include the extension of data and marketing exclusivity for new agricultural products to a minimum of 10 years. For new pharmaceutical products, both data and marketing exclusivity may be granted for at least five years, and for new biologics, data exclusivity may be granted for at least eight years and marketing exclusivity for at least five years.
Conclusion
Once the above amendments are in force, it would certainly seem that some aspects of the TPPA would be implemented. Malaysia’s IP landscape will certainly see far-reaching changes with the above amendments to the relevant IP legislation. With these amendments being tabled at the Parliament sometime in the first quarter of 2017, Malaysia will be on par with other jurisdictions with more advanced IP laws.
[1]“Summary of the Trans-Pacific Partnership Agreement”, Office of the United States Trade Representative, accessed on 10 March 2017 at: https://ustr.gov/about-us/policy-offices/press-office/press-releases/2015/october/summary-trans-pacific-partnership.
[2] “TPP: What is it and why does it matter?”, BBC News, accessed on 10 March 2017 at: http://www.bbc.com/news/business-32498715.
[3] www.thestar.com.my/news/nation/2016/11/29/protecting-sound-smell-and-colours-trademark-amendments-to-also-address-ip-issues/
[4] http://acccimserc.com/file/file/TPPA%20Part2%20Booklet%20-%20IP%20-20as%20at%2020%20April%202016.pdf
[5] www.mps.org.my/view_file.cfm?fileid=1863
For further information, please contact:
Karen Abraham, Partner, Shearn Delamore & Co
karen@shearndelamore.com
