IP ALERT OF CASES


A) "TITLEIST" wins counterfeit suit

In a recently reported case, Acushnet Company v. Metro Golf Manufacturing Sdn Bhd [2006] 7 CLJ 557, the Plaintiff was both the common law owner and registered proprietor of the mark "TITLEIST" for golf items in Malaysia.

The Defendant was caught with counterfeit golf items bearing the mark "TITLEIST" and argued that they had obtained the said products from a third party company, the authorised manufacturer of the Plaintiff. This, in fact, was not the case.

Subsequently, the Plaintiff applied for summary judgment against the Defendant on the basis that the Defendant did not have a case to answer, the Defendant failed to submit evidence to show that the said third party was an authorised contract manufacturer. In any event, the Court held that the contract manufacturer was not entitled to the use of the mark, in any manner outside the ambit of the manufacturing license. The third party therefore had no right to sell the products to the Defendant or authorise the Defendant to use the Plaintiff's mark. The Court therefore granted summary judgment in favour of the Plaintiff.

This case is reflective of the Malaysian Court's continued stand in the enforcement of IP rights in Malaysia. As shown in this case, the Courts will not hesitate to grant summary judgment in favour of IPR owners where it so warrants.

B) Duty of Care - Maelstrom Resources Sdn Bhd & Anor v. Shearn Delamore & Co And Another [2007] 1 CLJ 50

In a recently reported case, Maelstrom Resources Sdn Bhd & Anor v. Shearn Delamore & Co And Another [2007] 1 CLJ 50, the Defendant rendered legal opinions on the patentability of the Plaintiff's invention. The Defendant advised that the Plaintiff could proceed to exploit the same despite the existence of a third party's valid patent in Malaysia and the third party's threats for legal action against the Plaintiff.

Insofar as the Defendant's advice on the patentability of the said invention was concerned, the Defendant was competent as the Court subsequently invalidated 5 of the 6 claims of the said third party's patent.

However, the main issue raised during the trial was whether the Defendant owed a duty of care to the Plaintiff at the time the legal opinion was rendered. It was argued that the Defendant knew or ought to have known that in exploiting the invention, the Plaintiff bore a foreseeable risk of the probable reaction and counter-action from the third party. Further, the Defendant should have known that the Plaintiff ran the risk of riding out sustained litigation by the third party if they decided to exploit their invention based on the Defendant's advice.

The Court held that a solicitor has a duty of care to warn his client of the risks he would face. In this case, if the Defendant had properly advised the Plaintiff of the legal impediments they were likely to face over a period of time, the Plaintiff would have been able to weigh their options before deciding to exploit their invention.

Accordingly, the Court held that the Plaintiff established all the elements of negligence against the Defendant, in that the Defendant owed a duty of care to the Plaintiff and this duty was breached by them since they failed to warn the Plaintiff of the potential legal impediments. Thus the Plaintiff succeeded in their claim for negligence and was awarded costs and damages.

REMINDER ON CHANGES TO PATENT LAW

Changes to Deferment of Grant in Malaysia

With the accession of Malaysia as a contracting member of the Patent Cooperation Treaty (PCT) on 15th May 2006, Regulation 27B of Malaysian Patents Act concerning deferment of a request for Substantive Examination or Modified Examination has been amended.

In particular, an applicant's option to request for a deferment has been extended to five (5) years from the filing date instead of three (3) years.

If the applicant is unable to file in a request for a modified substantive examination within this five (5) years period, the applicant may file a request for a substantive examination within three (3) months from the expiry of the said time period.

These extended periods for deferment of grant applies to all requests filed after 16th August 2006.



PCT Application in Malaysia

Since 16th August 2006, it has been possible to make a PCT international application at the Malaysian Patent Office. All PCT International applications having an international filing date of 16th August 2006 or thereafter can enter national phase in Malaysia.

Alternatively, an application can be filed as a non-convention application in Malaysia. There is a grace period for a disclosure to be disregarded if the disclosure occurred within one (1) year preceding the date of filing of the patent application. This grace period also applies to the publication of an International (PCT) application filed by the applicant.