1. IPR REGIONAL WORKSHOP
DEVELOPMENT OF ENFORCEMENT REGIME
RTC JAPAN 11-14 SEPT 2012
BY ZAKARIA YUSUFF
STATE DEPUTY OF CUSTOM
(ENFORCEMENT DIVISION)
ROYAL MALAYSIA CUSTOM

3. ROYAL MALAYSIAN CUSTOMS
DEPARTMENT

4. DETAILS OF ROYAL MALAYSIAN
CUSTOMS ADMINISTRATION

5. ROYAL MALAYSIAN CUSTOMS
 VISION
 To Be A World Class Customs Administration By The Year 2015
 MISION STATEMENT
 To Spur Economic Growth, Preserve National Security And
Society’s Well Being Through Revenue Collection, Trade And
Industrial Facilitations And To Ensure Effective And Efficient
Legislative Compliance
 FUNCTION
• Collect Indirect Taxes more efficiently and effectively
• To encourage Industrial Growth and development
• Detect & prevent smuggling activities, prevent loss of revenue
• Administer Customs related laws and regulations
• Coordinate International Affairs and Clients affairs

6. LEGAL BASIS
 The Major Laws Administered And Enforced By The Malaysian Customs
Authority Are As Follows:-
 Customs Act 1967
 Customs Regulations 1977
 Excise Act 1976
 Excise Regulation 1976
 Sales Tax Act 1972
 Sales Tax Regulations 1972
 Service Tax Act 1975
 Service Tax Regulations 1975
 Free Zone Act 1990
 Free Zone Regulations 1991
 Vehicle Levy Act 1983
 Dangerous Drugs Act 1952
 Anti-Money Laundering and Anti-Terrorism Financing Act 2001
 Anti-Trafficking in Persons and Anti-Smuggling of Migrants Act 2007
 Chemical Weapons Convention Act 2005
 Strategic Trade Act 2010

7. ORGANIZATION STRUCTURE ON
I.P.R ENFORCEMENT

8. POLICY – NATIONAL INTELLECTUAL
PROPERTY POLICY (N.I.P.P.)
 Policy Statement
 To harness I.P. as a new engine of growth.
 Focuses on maximizing the contribution of I.P.
 Valuable competitive economic asset in a knowledge-based
economy.
 To build Malaysia as an I.P. hub.
 Rationale
 A principal guide in enacting laws and regulations.
 Encourage activities on I.P. amongst the related
government agencies, research institutions, tertiary
institutions, N.G.Os. and the private sector.
 To stimulate and develop the I.P. industry as an integrated
component of the country’s economic policy.

9. CONTINUE…
 Objectives
 Highest standard of I.P. protection system.
 Promotion of I.P. centered activities.
 Promotion of commercial exploitation of I.P..
 Development of I.P. management capabilities.
 Development of infrastructure for I.P. transaction.
 Protection of national I.P. interest.
 Human resource development and public awareness.
 Promotion of foreign investment and technology
transfer.

10. Continue…
 Aims
 Enhancement of economic, social and cultural
prosperity.
 Strengthening the nation’s competitiveness.
 Development of Malaysia as a leading I.P. hub.
 Establishment of an I.P. culture.

11. STRATEGY
 Some Of The Strategies Are:-
 Strengthening the I.P. administration.
 Updating laws and regulations.
 Capacity building.
 Strengthening government agencies.
 Setting up I.P. court.
 Fast and easy acquisition of protection and rights.
 Proactive MyIPO Resource Centre.
 Create an encouraging I.P. environment.
 Enlarge I.P. pool.
 Acquire foreign I.P. in selected priority areas.
 Foster tripartite smart partnership between the government,
private sector and research institutions.
 Capitalize existing I.P. pool.

12. CONTINUE…
 Promote distribution of research and development
results.
 Identify I.P. creators in the country.
 Support I.P. industries in their commercial exploitation.
 Stimulate entrepreneurial I.P. related activities.
 Create a business environment for the local and
foreign enterprises.
 Create different level of I.P. specialists.
 Monitor the development and progress of I.P. in the
international arena.
 Setting up a national institute on I.P. specialized
training.
 Conduct regular I.P. public awareness campaign.
 Ensuring investors gain in their I.P. ventures.

13. PROTECTION
 Border Enforcement
 I.P.R. Specialist Team
 Sharing Expertise with I.P. Owners
 Building In-house I.P. Experts
 Usage of Information Technologies

14. ENFORCEMENT ACTION
 Seizure of IPR Infringing Products
 1) 191 sets of counterfeit 'Kenwood brand' walkie-talkie
 2)Counterfeit ' Motorola brand' walkie-talkie
 Counterfeit Cigarettes
 1) 10,210,000 stick of 'Texas 5' & 'Luffman' white
cigarettes (Contraband)

15. FALSIFYING CONTRY ORIGIN
 Seizures of 3,328 units of Food Processor with YELMO
brand
 Made in China products but claimed as Made in Malaysia
 Seizures of 7 container of Garments
 Made in China garments but claimed as Made in Malaysia
 Seizures of 2,100 cartons of GLINTER SOFT DRINK
 Made in China but claimed as Made in Malaysia

16. VIAGRA
21 June 2009
 4 containers 40 ft and 2 containers 20 ft were
detained in Port Klang
 Consignment declared as Health Supplement, based on our
Risk Assesment
 100% physical examination was conducted and found white
tablets suspected to be precusor for manufacturing syabu.
Also discovered counterfeit viagra and cialis tablets concealed
in the containers

17. Continues…
 The white tablets suspected as precusors was
investigated under The Dangerous Drugs Act 1952
and the counterfeit viagra case was handed over to
Domestic Trade and Consumer Affairs Ministry
(MDTCA) is now officially known as the Ministry
of Domestic Trade, Cooperative and
Consumerism (MDTCC), effective 11 June 2009 for
further investigation and prosecution.

18. BORDER ENFORCEMENT
 The National Legislations on I.P.R. only grant the
Malaysian Customs Authority ex-officio powers. The
Legislations are :
 Copyright Act 1987
 Trade Marks Act 1976
 Patents Act 1983
 Industrial Design Act 1996
 Layout designs and Integrated Circuit Act 2000
 Geographical Indications Act 2000

19. SPECIALISED IPR ENFORCEMENT
TEAM
 We do not have dedicated personnel at the
regional specializing on I.P.R.. We have personnel
to undertake the task on a sharing basis. The plan
to expand the current resources is in the pipeline
and we expect someday it will be a reality that a
fully specialized and dedicated personnel on
I.P.R.

20. EXPERT TRAINING
 We have a very closed working partnership
with the I.P. holders and in many occasions
the I.P. holders have invited the Customs
Officers for specialized training on their
products.
 Training on I.P.R. is also conducted by our
Customs Academy. We have training modules
devised with the purpose of building I.P.R.
experts in the organization.

21. USE OF CENTRAL DATABASE
 The Customs Authority is working closely with
MyIPO on developing a system of sharing I.P.R.
database and hopefully, this will materialized in
the future. With this database combining with our
existing Central Intelligence Network, we are
confident that we will be able to curb the activity
of smuggling counterfeit and pirated goods into
and going outside the country.

22. PROBLEMS
 Fine Tuning Present Risk Assessment with
I.P.R. Enforcement.
 Overstretched Resources.
 Capacity Building – Training of Experts.
 Legislation Only on Importation and Not on
Exportation and In-Transit.

24. NATIONAL LEGISTLATIONS ON IPR
 Copyright Act 1987
 Trade Marks Act 1976
 Trade Descriptions Act 1972
 Patent Act 1983
 Industrial Design Act 1996
 Optical Disc Act 2000

25. TRIPS AGREEMENT 1994
(Trade Related Aspects of Intellectual Property Rights)
 Art. 41 (General Obligations)
 Members shall ensure that enforcement procedures as
specified are available under their law.

26. TRIPS AGREEMENT 1994
Sec. 4 Special Requirements Related To Border Measures
 Art. 51
 Right holder (counterfeit trademark / pirated copyright
goods) lodge report to competent authorities for suspension
by customs of the release of such goods (import & export into
/ outside Malaysia).
 “Competent Authorities” in Malaysia – Ministry Of Domestic
Trade And Consumer Affairs (MDTCA)

27. TRIPS AGREEMENT 1994
Sec. 4 Special Requirements Related To Border Measures
 Art. 52
 right holder to provide adequate evidence of infringement of
the IPR to the competent authorities
 Supply detailed description of the goods
 The competent authorities approval.

28. TRIPS AGREEMENT 1994
Sec. 4 Special Requirements Related to Border Measures
 Art. 53
 IP owner (IPO) to provide security to protect the
defendant, competent authorities and to prevent abuse
 Importer to give security on application of release to
protect the right holder and such security shall be
released if the IPO fails to pursue the right action
within reasonable time.

29. TRIPS AGREEMENT 1994
Sec. 4 Special Requirements Related To Border Measures
 Art. 54 – Notice of suspension
 Art. 55 – Duration of suspension
 Art. 56 – indemnification of the importer and the
owner of the goods
 Art. 57 – Right of inspection and information
 Art.58 – Ex-officio Action

30. TRIPS AGREEMENT 1994
Sec. 4 Special Requirements Related To Border Measures
 Art. 59 – Remedies
 Competent authorities to dispose the infringing goods
in accordance with Art. 46
 Not to allow re exportation of the infringing goods.
 Art.60 – De Minimis import
 Art. 51-59 does not applicable to small quantities of
goods

31. TRIPS AGREEMENT 1994
Sec. 4 Special Requirements Related To Border Measures
 Art. 61 – Criminal Procedures
 Members to provide criminal procedures and penalties
to cases of trademark counterfeiting / copyright piracy
on a commercial scale.
 Remedies :
 Imprisonment / fine
 Seizure
 Forfeiture
 destruction

32. ROLE OF ROYAL MALAYSIAN
CUSTOMS ON IPR
 COPY RIGHT ACT 1987
 Sec. 39
 Sec. 41
 TRADE DISCRIPTION ACT 1972
 Sec. 17
 TRADE MARKS ACT 1976
 Sec. 70C – 70P
 Reg. 83A

33. COPYRIGHT ACT 1987
 Sec. 39 – Restriction on importation of infringing
copies
 IPO applies to Controller (MDTCA) for the work to be
treated as infringing copies
 Security
 Fee / supporting document
 Controller Approval / duration as infringing copies
 Importation to be prohibited

34.  Sec. 39
 Power to search and seizure of prohibited infringing
copies
 Assistant Controller, police, officer of customs
 After seizure
 Give notice to IPO / owner
 Prohibited infringing copies liable to forfeiture

35.  Sec. 41 – Offences
 Sec. 41(f)
 Imports into Malaysia otherwise than for his private and
domestic use
 Shall be liable to a fine not exceeding RM 10,000 for each
infringing copy / jail not exceeding 5 years or both. For
subsequent offence to a fine not exceeding RM 20,000 / jail not
exceeding 10 years or both
 Sec. 41(j)
 Imports for distribution ….
 Shall be liable to a fine not exceeding RM 250,000 / jail not
exceeding 3 years / both. For subsequent offence to a fine not
exceeding RM 500,000 / jail not exceeding 5 years or both

36.  Part VII - Enforcement Powers
 Assistant Controller and Police

37. TRADE MARKS ACT 1976
Part XIVA
Border Measures
 Seizure of counterfeit trade mark and secure storage of
seized goods by authorized officer
 Authorized officer notify Registrar / importer /
applicant of the seizure
 Applicant file action for infringement
 Inspection of seized goods by applicant / importer
subject to undertaking
 Forfeiture of seized goods by consent of the importer

38.  Compulsory released of seized goods to importer:
 Applicant not instituted action for infringement
 Action for infringement has been instituted but after 30
days there is no Court order for preventing the released
of the goods.
 Aggrieved party may apply compensation from court if
applicant failed to instituted action for infringement.

39.  Sec. 70 o – Ex Officio action
 Authorized officer detain the goods based on prima facie
evidence
 Authorized officer notify the Registrar / importer /
applicant of the detention

40. TRADE DESCRIPTIONS ACT 1972
 Sec. 17 – Prohibition of importation of goods bearing
false indication of origin.
 The Minister may make an order prohibiting the import
of the goods into Malaysia.

41.  Until today RMC does not received:
 any application for prohibition of importation of
infringing goods under Sec. 39 of the Copyright Act.
 Any objection of importation under Sec. 70D of the
Trade Marks Act
 - Order for prohibition under Sec. 17 of the Trade
Descriptions Act

42.  (Ex Officio Action by RMC)
 Any complaint on importation of infringing goods /
counterfeit trade marks:
 IPO refer to RMC headquarters
 Prima facie evidence of IP right holder’s
 Supply sufficient detailed description of goods

43.  RMC search and seized
 Notify IP right holders and MDTCA
 Inspection by IP right holders and MDTCA
 If proved to be infringing goods, refer the case to
MDTCA for investigation and further action.
 If no proof of infringement and no violation of
custom’s procedures - released the goods to the owner
/ importer as soon as possible.