The Firm

V CHONG W LAM or 'VW' as it is otherwise affectionately known, is a niche legal firm focusing on all aspects of intellectual property law. Although it is a relatively new set-up, it is made up of lawyers who are willing to think outside the box to achieve viable solutions for its clients. The partners have extensive experience in the following matters:

• Copyright
  
  In Malaysia, the principal legislation which governs copyright is the Copyright Act 1987 (Act 332). As Malaysia acceded to the Berne Convention on 1 October 1990, copyright works emanating from the member states of the Berne Convention are also protected. Unlike the United States of America, there is no copyright registration in Malaysia. The Copyright Act 1987 has recently been amended to increase the penalty for offences under the Act.
• Domain Name Disputes

  The Malaysian Network Information Centre (“MYNIC”), the administrator of the .my domain names has recently adopted the MYNIC Dispute Resolution Policy (“MYDRP”). The MYDRP is an administrative process (akin to the ICANN Uniform Domain Name Policy) geared towards efficient and economical resolution of such disputes. This of course, does not preclude the parties from seeking relief from the courts.

• E-commerce, Communications & IT

  To promote e-commerce in Malaysia, the government has enacted various legislation viz. the Digital Signature Act, 1997 (Act 562), the Computer Crimes Act 1997 (Act 563), the Telemedicine Act 1997 (Act 564) and the Communications and Multimedia Act 1998 (Act 588). These statutes are known as the cyberlaws of Malaysia. Interestingly, the Communications and Multimedia Act 1998 provides inter alia that censorship of the Internet is not permitted in its bid to establish Malaysia as a major global centre and hub for communications and multimedia information and content services.

• Entertainment & Media

  As there is no sui generic legislation in Malaysia to protect “character merchandising”, other statutes such as the Copyright Act 1987, Trade Marks Act 1976 and the Industrial Design Act 1999 are relied upon heavily to provide protection.

• IPRs Enforcement

  The Malaysian government in its efforts to wipe out piracy in Malaysia has empowered the Enforcement Division of the Ministry of Domestic Trade & Consumer Affairs to conduct searches and seizure of counterfeit goods. Amendments to the Copyright Act 1987 are underway to enhance the punishments for criminal offences relating to copyright and to provide the Enforcement Officers with the powers to arrest an offender without warrant.

• Industrial Design Registration

  The Industrial Design Act 1996 came into force on 1 September 1999. Previously, industrial designs were protected under the United Kingdom Registered Designs (Protection) Act 1949 (Act 214), the United Kingdom Designs (Protection) Ordinance of Sabah (Sabah Cap. 152) and the Designs (United Kingdom) Ordinance of Sarawak (Swk. Cap. 59). The Industrial Design Act 1996 was recently amended as a result of the establishment of the Intellectual Property Corporation of Malaysia under the Intellectual Property Corporation of Malaysia Act 2002 (Act 617) which came into force on 3 March 2003. This statutory body has been empowered inter alia to regulate intellectual property in Malaysia and to administer the Patent Office, the Industrial Designs Registration Office, and the Trade Marks Office.

• IPRs Licensing

  There is generally freedom to contract in Malaysia. However, there may be certain guidelines issued by the Malaysian Industrial Development Authority which requires strict compliance particularly the manufacturing sector. Nonetheless, to further enhance Malaysia’s competitiveness as an investment location, the Malaysian government has further liberalized the policy on equity ownership, expatriate employment and technology transfer in the manufacturing sector. The Franchise Act 1998 came into force on 8 October 1999 and is administered by the Ministry of Entrepreneur Development.

• Litigation

  The procedural rules have been amended to introduce a system of case management with the object of speeding up the disposal of civil cases. Ex-parte injunctions are available to plaintiffs who can demonstrate that there is a serious question to be tried and the balance of convenience lies with them. As for Anton Piller Orders, the plaintiffs must in addition establish that there is a serious risk of destruction of material evidence. Litigation is usually pursued as the last option because of its high costs and delays within the court system.

• Patent Registration

  The Patents Act 1983 has undergone substantive amendments to bring the same in line with the provisions of the Agreement On Trade-Related Aspects Of Intellectual Property Rights (TRIPs) since Malaysia is a member of the World Trade Organisation since 1 January 1995. Recent amendments (which have yet to come into force in its entirety) indicate that Malaysia will be acceding to the Patent Cooperation Treaty soon [Patents (Amendment) Act 2003 (Act A1196)].

• Trade Description Orders

  IP owners frequently seek relief under the Trade Descriptions Act 1972 particularly in circumstances where the tort of passing-off and the infringement of registered trade marks are involved. Upon obtaining a Trade Description Order usually on an ex-parte basis, the Enforcement Division of the Ministry of Domestic Trade & Consumer Affairs is then empowered to take seize infringing goods bearing the false trade description, at its discretion.

• Trade Mark Registration

  Malaysia recognizes well-known trade marks and geographical indications with the coming into force of the Trade Marks (Amendment) Act 2000 (Act A1078) on 1 August 2001.