Rashidah Ridha Sheikh Khalid, MyIPO

Transcription

1 . Rashidah Ridha Sheikh Khalid, MyIPO

2 Intellectual Property (IP) refers to all creations of the human mind IP protects applications of ideas and information that are commercial values -Cornish & Llewelyn 2003 IPR is territorial in nature It is intangible in nature

3 IP as intangible property Intangible property Tangible property -intellectual property Intangible wealth, easily appropriated and reproduced, once created the marginal cost of reproduction is negligible Land, houses, estates, cars

4 WAYS TO PROTECT IP Commercialization Assignment Licenses - exclusive - non-exclusive Franchising- a form of business expansion involving the exploitation of an IP asset. Most of Franchise contracts are by way licenses from Franchisor to Franchisee

5 Intellectual Property Patent Industrial Designs Copyrights Integrated Circuit & Layout Designs INDUSTRIAL PROPERTY Trade Marks

6 TRADE MARKS Protection for trade marks TRADE MARKS an essential in Franchising A mark used or proposed to be used in relation to goods/services for purpose of indicating a connection in the course of trade between the goods/services and the person providing such goods/service mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination.

7 Protection for trade marks Registrability criteria of a TM:- Name represented in a special manner or Signature Invented word or word having no direct reference to the character of goods/services Distinctive mark Non-registrable TMs A geographical name Causes deception or confusion to the public Contrary to law, scandalous or offensive Prejudicial to the interest or security of nation Identical or similar to a well-known mark Identical or similar to a registered TM

8 NON-REGISTRABLE TRADE MARK REGULATION 13(1)(b) TMR 1997 SPECIFICATION OF GOODS: BATIK SARONG TEXTILES; ALL INCLUDED IN CLASS 24. SECTION 10(1)(c) TMA 1976 SECTION 10(1)(d) TMA 1976 SECTION 10(1)(e) TMA 1976 SPECIFICATION OF GOODS: COFFEE, TEA, COCOA, SUGAR, RICE, FLOUR AND PREPARATIONS MADE FROM CEREALS, BREAD, PASTRY AND CONFECTIONERY, ICES, HONEY, YEAST, BAKING-POWDER; ALL INCLUDED IN CLASS 30. REGULATION 14(b) TMR 1997 SPECIFICATION OF GOODS: CLOTHING, FOOTWEAR, HEADGEAR; ALL INCLUDED IN CLASS 25.

9 It is against the law to out in the symbol before obtaining the registration of the mark :Section 81 of the Trade Marks Act 1976 Symbol means the Trade Mark has been registered Symbol TM means the trade mark application has been filed and pending registration

10 Protection of Trade Marks in the Franchise Act Section 7 of the Franchise Act 1998 requires franchisor to register his trademark or service mark relevant to his franchise in accordance with the Trade Marks Act 1976 (if they are registrable under the Act) before applying for franchise registration

11 Trade marks & Franchising Trade marks as a tool for creating brands in franchising Prominent parts of goodwill! Use of Franchisor s established goodwill (trademark) as a fast track to position new company in the market Franchisees will get competitive advantage

12 Trade marks & Franchising Trade marks and the use of it is incorporated into the Franchise Agreement Usually Franchisee must expressly acknowledge that the trade marks belongs to the Franchisor Together with the goodwill associated with the trade marks Any unauthorised use (ie infringement of the Franchisors rights, use of the trade mark is not as designated by the Franchisor) may amount to termination of Franchise Agreement. Trade marks shall ceased to be used once terminated

13 Other types of IP: Copyrights Copyright protect creative works, such as books, movies, music, paintings, photographs, and software Protection given to :- Literary works Musical works Artistic works Films Sound Recordings Broadcasts Performers

14 Copyright protection is automatic No registration shall be free of any formality Berne Convention after the new amendments of the Copyrights Act in 2012, MyIPO now accept on basis of voluntary notification

15 Duration of protection in Malaysia: 50 years life of author + 50 years thereafter (Literary, Musical & Artistic Works) and 50 years after first published/made/given (film, sound recording/broadcast/perform ers)

16 Copyrights In the franchising context: Can be found in the Franchise operations manuals Software programmes eg templates, accounting softwares etc Recipes, business models etc

17 Unregistered IP: Protection under the law of Tort Based on common law, started from the tort of deceits There is no legislation pass by Parliament Enforced by court s decision. For trade mark ( registered and unregistered) The deceiver, the audience and the victim. Requirement of goodwill

18 Protection under the law of tort Protection for confidential information under contract, employer-employee relationship, husband and wife, etc Need to show:- - information are confidential - recipient who obtained the information uses it - damages suffered by the owner

19 Illustration Customers list Secret recipes Pricing Smells of a new perfume

20 Why IP protection is given? Capital expenditure for new products R & D Marketing and advertisement No free riders Maintaining loyal followers Profit IP protection provides a degree of protection with regards to the Franchise

21 Not all IPRs have the same degree of importance with regards to Franchising We have seen previously that Trade Marks, confidential information, trade secrets, know how are directly relevant to Franchising operations as it relates to business systems and operations, its trade secret that gives the Franchise business the niche. Other components of IPRs that is worth noting and may be applicable in a Franchise operations are Industrial Designs Patents

22 PATENT Basic idea of granting a patent the applicant applied to the government for the right of patent and in return for the monopoly given he must disclose everything about the invention in the patent document ( the description) Duration of protection granted 20 years. Patent for invention Patent can be applied for a product or a process. Patentable invention must be new, involves an inventive step &industrially applicable Priority date- first to file

23 Protection for industrial designs Protection for industrial designs that are new Design are feature of shape or configuration, pattern or ornament The design must be applied to an article The design must be applied by an industrial process. Appeal to the eye.

24 Industrial Designs in Franchising Role of Industrial Designs may sometimes feature in a franchising operations Thus, it is important to protect Industrial Designs as part of the larger brand concept of the Franchise F& B business The interior designs of the business concept, menu cards, uniquely designs cutlery and plates, other creative concepts that has the designs elements

25 INTERNATIONAL TREATIES Relevant to Intellectual Properties

26 International Treaties So how do you protect your IP in other countries? Expanding your business with IP overseas could risk your IP being stolen This is where the international treaties becomes operational, if Malaysia is a signatory

27 Malaysia is a member country to the following international IP treaties :- PARIS CONVENTION 1883 (01/01/89) WIPO CONVENTION 1967 (01/01/89) BERNE CONVENTION 1886 (01/10/90) TRIPS AGREEMENT (01/01/95) PATENT CO-OPERATION TREATY 1970 (16/08/06) NICE AGREEMENT 1957 (28/09/07) VIENNA AGREEMENT 1973 (28/09/07) WCT & WPPT (27/09/12)

28 FUTURE TREATIES TO BE RATIFIED RELEVANT TO TRADE MARKS MADRID PROTOCOL Administered by the World Intellectual Property Organization (WIPO) For the protection of Trade Mark Offers an international registration opportunities where trade mark applicants can designate Malaysia in their international trade mark applications Relevant for expansion of Franchise Overseas

29 Administration of IP in Malaysia Intellectual Property Corporation of Malaysia (MyIPO) is the legal custodian of IP in Malaysia. A statutory body known as the Intellectual Property Corporation of Malaysia (MyIPO) was established pursuant to the Intellectual Property Corporation of Malaysia Act 2002 [Act 617] MyIPO plays an important role in promoting IP, dissemination of IP knowledge to the public.

30 Role of MyIPO Initially, MyIPO exists to provide rights to intellectual property. Its integral role is to administer intellectual property law, primarily on the following issues:- i). as a custodian of the IP on behalf of the Government of Malaysia; ii). Granting patents and patent examination process; iii). registering trademarks and industrial designs; iv). Copyright protection to copyright owners; v). role of intermediary interest (IP agents); vi). IP awareness campaign- Individual inventors, R&D in universities, government agencies etc

31 Role of MyIPO : Present With the rapid global trend, IP landscape has taken a new leap and there is calling to the IP office to cater to all these new changes that is taking place. The role of the IP office is no longer confine to just providing protection of IP, but the IP dissemination role of MyIPO now central to a more effective mode of delivery to national economy and societies whom have not tap the IP rights to the fullest.

32 Role of MyIPO: Present Granting patent and patent examination process efficient pendency performance Registering trademarks and ID efficient pendency performance Copyright protection provide voluntary notifications, dissemination of knowledge to the appropriate copyright users Technology enabled filings and processing of applications Better enhancement of technology enabled filings IP awareness campaign to continue the IP awareness campaign and focus on SME etc Introducing IP monetization

33 CONCLUDING REMARKS Quotes from the famous Intellectual Property is the current economic spinner Y.A.B Dato Seri Abdullah Hj. Ahmad Badawi, Former Prime Minister of Malaysia during the National Intellectual Property Day 2005 I believe in intellectual property. In my view, it s the foundation of world economies, and certainly the foundation upon which Sun Microsystems was built [IP] is not about bringing the competition down, it s about driving global participation up. Jonathan I. Schwartz, President and COO of Sun Microsystems (1994) INTELLECTUAL PROPERTY CORPORATION OF MALAYSIA (MyIPO) copyright 2015

34 Thank You Rashidah Ridha Sheikh Khalid Legal Officer MyIPO Copyright Reserved 2015