Trade Agreements and the Effects of Existing Agreements on Malaysian Intellectual Property Laws
© Springer-Verlag Berlin Heidelberg 2015
Christoph Antons and Reto M. Hilty (eds.)Intellectual Property and Free Trade Agreements in the Asia-Pacific RegionMPI Studies on Intellectual Property and Competition Law2410.1007/978-3-642-30888-8_14Free Trade Agreements and the Effects of Existing Agreements on Malaysian Intellectual Property Laws
(1)
Faculty of Law, Universiti Teknologi MARA (UiTM), Selangor Darul Ehsan, Malaysia
Abstract
This chapter explores the Intellectual Property chapters of the various Free Trade Agreements to which Malaysia is a party to, either through bilateral or plurilateral agreements. It also reviews the Intellectual Property chapters of the various on-going negotiations to which Malaysia is involved in. The implications and effects of the various agreements are analysed. The writer also analyses the various amendments to the Malaysian Intellectual Property law which have to be made if the provisions in the ongoing negotiation were to be accepted. It concludes that the existing agreements would have minimal impact on the Intellectual Property law of Malaysia. However, the ongoing negotiations may have adverse implications, especially in relation to access to affordable medicine and public health.
Keywords
Access to MedicineData ExclusivityFree Trade AgreementIntellectual PropertyInternet Service ProviderPublic HealthTechnological MeasuresH.G. Lim: LL.B (Hons) (University of London), Certificate in Legal Practice (Hons) (Malaysian Qualifying Board), LL.M (University of London), Diploma in Intellectual Property Law (Distinction) (Queen Mary College, University of London), Ph.D. University of London, Professor of Law.
1 Introduction
Malaysia has been involved in free trade negotiations, both at the regional (ASEAN) and bilateral level, since the early 1990s. To date, Malaysia has concluded and signed bilateral FTAs with the following countries: Japan, Pakistan, India, China, Korea, Australia, New Zealand and Chile. At the regional level, Malaysia and its ASEAN partners have also concluded FTAs with China, Japan, Korea and India, as well as Australia and New Zealand. On-going negotiations are being conducted with Turkey and the European Union. Negotiations between Malaysia and Bangladesh are expected to commence soon. With the joining of the on-going negotiations of the Trans-Pacific Partnership Agreement, Malaysia is now also involved in plurilateral free trade negotiations.
This chapter examines the Intellectual Property (IP) chapters of the various FTAs and the effects of existing agreements on Malaysian IP laws. Where possible, the various possible Intellectual Property provisions in on-going negotiations are also analysed.
2 Concluded Bilateral Free Trade Agreements
2.1 Malaysia–Japan Economic Partnership Agreement (MJEPA)
Negotiations for the Malaysia–Japan Economic Partnership Agreement (MJEPA) were concluded on 13 December 2005. The MJEPA came into force on 13 July 2006, and is Malaysia’s first comprehensive trade agreement. It covers trade in industrial and agricultural goods, trade in services, investment, rules of origin, customs procedures, standards and conformance, intellectual property, competition policy, enhancement of business environment, safeguard measures, and dispute settlement.
2.1.1 Intellectual Property Provisions
Chapter 9 of the MJEPA deals with Intellectual Property matters, contained in 19 Articles, from Article 112 to Article 130.
2.1.1.1 General Provisions
Article 112 deals with general provisions relating to, inter alia, assurance of effective and non-discriminatory protection of Intellectual Property, promotion of efficiency and transparency in administration of the IP system and provision of measures for the enforcement of IP rights against infringement, and reaffirmation of commitment to comply with the obligations set out in the Chapter and in international agreements relating to Intellectual Property to which both countries are parties. Articles 114 and 115 spell out the obligations related to the national treatment and ‘most-favoured-nation’ treatment principles.
2.1.1.2 Patents
In relation to patents, dealt with in Article 119, the Agreement reiterates the principle of Article 27 of the TRIPS Agreement that patents ‘shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application in accordance with Article 27 of the TRIPS Agreement’.1 Article 119.2 further provides that a patent application ‘shall not be rejected solely on the ground that the subject matter claimed in the application is a micro-organism’.
Article 119.3 and Article 119.4 provide for the possibility of an expedited examination on reasonable grounds and also the possibility of an expedited examination in cases where the applicant has filed an application for a patent of the same invention or substantially the same invention in the other country.
Article 119.5 states that each country ‘shall publish patent applications, in accordance with its laws and regulations, after the expiration of a period of 18 months from the filing date or, where priority is claimed, the priority date’.
2.1.1.3 Industrial Designs
On industrial designs, Article 120.1 commits the parties to ‘provide for the protection of independently created industrial designs that are new or original in accordance with Article 25 of the TRIPS Agreement’. Article 120.2 clarifies that an industrial design ‘shall not be new, if it is made available to the public through telecommunication line before the filing date of the application for the registration of industrial design or, where priority is claimed, the priority date of the application, in accordance with its laws and regulations’. Lastly, Article 120.3 seems to require an amendment to the Industrial Design Act 1996 of Malaysia. This Article provides:
Each Country shall endeavour to provide that a claimed industrial design shall not be new, if it is publicly known or described in a publication made available to the public in the other Country before the filing date of the application for the registration of industrial design in the former Country or, where priority is claimed, the priority date of the application, in accordance with its laws and regulations.
Presently, the novelty requirement that is practised in Malaysia is the local novelty system. The Agreement would appear to require Malaysia to move over from a local novelty system to ‘dual country’ novelty system.
2.1.1.4 Trade Marks
The provisions on obligations relating to trademarks are found in Article 121, which states:
Each Country shall ensure that the owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered, where such use would result in a likelihood of confusion.
In addition, Article 121.2 provides:
Each Country shall refuse or cancel the registration of a trademark, which is identical or similar to a trademark well-known in either Country as indicating the goods or services of the owner of the well-known trademark, if use of that trademark is for unfair intentions, inter alia, intention to gain an unfair profit or intention to cause damage to the owner of the well-known trademark whether or not such use would result in a likelihood of confusion.
2.1.1.5 Copyright
In relation to copyright, Article 122.1 mandates that:
Each Country shall provide to authors, performers and producers of phonograms the exclusive right of authorizing the making available to the public of their works, performances fixed in phonograms and phonograms, respectively, by wire or wireless means, in such a way those members of the public may access them from a place and at a time individually chosen by them.2
In relation to protection for Internet Service Providers, Article 122.2 states:
Each Country shall provide for appropriate measures concerning limitations on liability for service providers:
(a) in [a] case where a service provider provides a necessary deterrent to the transmission of information through telecommunication systems or networks controlled or operated by the service provider which it believes to be the infringement of copyright or related rights; and
(b) in [a] case where the infringement of copyright or related rights occurs by the transmission of information through telecommunication systems or networks controlled or operated by a service provider and where the service provider is technically unable to deter the transmission or has difficulty in finding the infringement of copyright or related rights.
2.1.1.6 Protection of Plant Varieties
In relation to the protection of plant varieties, Article 123.1 states that the parties ‘recognise the importance of protecting new plant varieties in a manner consistent with internationally harmonised system. For this purpose, each Country shall ensure that rights relating to new plant varieties are adequately protected.’ Under Article 123.2, each party, ‘having due regard to the concerns of the other Country’ is committed to ‘endeavour to protect as many plant genera or species as possible in a manner stated in paragraph 1 of this Article within the shortest period of time’.
2.1.1.7 Enforcement and Border Measures
Article 125 deals with enforcement and border measures relating to goods infringing trademarks or copyrights or related rights. Corresponding measures may also be applied to goods infringing other Intellectual Property rights, inter alia, patents, utility models, industrial designs or rights relating to new plant varieties. Article 125.3 specially provides that each country ‘shall ensure that the competent authorities do not allow the re-exportation of the goods infringing trademarks or copyrights or related rights other than in exceptional circumstances’.
2.1.1.8 Civil and Criminal Remedies
Article 126 deals with the provisions of civil remedies for holders of Intellectual Property whereas Article 127 relates to criminal enforcement specifically in relation to ‘wilful trademark counterfeiting or copyright piracy on a commercial scale’. In addition, each party ‘shall, to the extent possible, endeavour to provide for criminal procedures and penalties to be applied in cases of wilful infringement of other Intellectual Property rights on a commercial scale’.
2.2 Malaysia–Pakistan Closer Economic Partnership Agreement (MPCEPA)
Malaysia and Pakistan concluded a bilateral Free Trade Agreement, the Malaysia–Pakistan Closer Economic Partnership Agreement (MPCEPA), on 8 November 2007. The Agreement took effect on 1 January 2008.3
2.2.1 Intellectual Property Provisions
Although there is a specific Intellectual Property chapter (Chapter 10)4 in the Agreement, the MPCEPA does not impact directly on the Intellectual Property law of Malaysia.
Chapter 4 of the Agreement deals with customs procedures and cooperation. In relation to Intellectual Property, Article 48 provides that the respective customs authorities ‘shall, wherever possible, cooperate and exchange information in their enforcement against importation and exportation of goods suspected of infringing Intellectual Property rights’.
Article 94 of the investment provisions of Chapter 9 provides that subject to certain conditions, the parties to the Agreement ‘shall not take any measures of expropriation or nationalisation, or measures amounting thereto, against the investments of an investor of the other Party’. Article 94.4 provides, however, that this prohibition ‘does not apply to the issuance of compulsory licences granted in relation to Intellectual Property rights in accordance with the Agreement on Trade Related Aspects of Intellectual Property Rights in Annex 1A to the WTO Agreement’.
The Intellectual Property chapter proper is contained in Chapter 10. Article 104 of this chapter contains the statements of principles relating to Intellectual Property. The parties reiterated the recognition of ‘the importance of Intellectual Property in promoting economic and social development, particularly in the new digital economy, technological innovation and trade’.5 Article 104.2 recognises ‘the need to achieve a balance between the rights of right holders and the legitimate interests of users and the community with regard to protected subject matter’.
Article 105 contains the reaffirmation by the parties that they ‘comply with their existing rights and obligations with respect to each other under the TRIPS Agreement and any other multilateral agreement relating to Intellectual Property to which they are both parties’.
Article 106 spells out the parties’ commitment to endeavour to ‘strengthen, promote and develop cooperation in the area of Intellectual Property’. It states:
Such cooperation may, inter alia, include:
(a) exchange of information relating to developments in Intellectual Property policy in their respective agencies;
(b) exchange of information on the implementation of Intellectual Property systems, aimed at promoting the efficient registration of Intellectual Property rights;
(c) promotion of the development of contacts and cooperation among their respective agencies, including enforcement agencies, educational institutions and other relevant organisations with an interest in the field of Intellectual Property;
(d) policy dialogue on initiatives on Intellectual Property in multilateral and regional forums;
(e) exchange of information and cooperation on appropriate initiatives to promote public awareness of Intellectual Property systems; and
(f) such other activities and initiatives as may be mutually determined by the Parties.
2.3 Malaysia–New Zealand Free Trade Agreement (MNZFTA)
Malaysia and New Zealand commenced negotiations on a Free Trade Agreement in May 2005. The negotiations were finally concluded on 30 May 2009 and signed on 26 October 2009.6 It came into force on the first of August 2010.7
2.3.1 Intellectual Property Provisions
Chapter 11, the Intellectual Property chapter, deals with agreed matters in relation to Intellectual Property.8 It is surprisingly very short. Other than stating in Article 11.3 that ‘each party reaffirms its commitment to the provisions of the WTO TRIPS Agreement and any other multilateral agreement relating to Intellectual Property to which both are party’, there is no specific mention of any other treaties of which to be a member. Neither is there any provision on copyright, patents, trade marks or geographical indications.
2.3.1.1 General Provisions
Article 11.2 reiterates the Intellectual Property principles. Article 11.4, among others, deals with cooperation and exchange of information between the parties that relate to matters such as the prompt notification of new laws, especially in relation to the enforcement of Intellectual Property rights and changes and development relating to more effective and efficient registration or grant of Intellectual Property rights. Article 11.5 deals with cooperation on enforcement of Intellectual Property rights, with a view to eliminating trade in goods infringing Intellectual Property rights. Measures include the exchange of information concerning enforcement of Intellectual Property rights and policy dialogue on initiatives for the improvement of enforcement of Intellectual Property rights in multilateral and regional fora.
2.3.1.2 Traditional Knowledge
Interestingly, there is a provision on traditional knowledge. This is found in Article 11.6, which states: ‘Subject to each Party’s international obligations, the Parties may establish appropriate measures to protect traditional knowledge.’9
2.4 Malaysia–Chile Free Trade Agreement (MCFTA)
On 18 November 2006, during the Asia Pacific Economic Cooperation (APEC) Meeting in Chile, the leaders of both Malaysia and Chile announced that there would be FTA negotiations between the two States. The negotiations were concluded in May 2010 and cover Trade in Goods and Cooperation. Negotiations on services and investments will commence within 2 years after the implementation of the Trade in Goods Agreement. This is Malaysia’s first FTA with a Latin American country. The Malaysia–Chile Free Trade Agreement (MCFTA) was signed on 13 November 2010 and came into force on 25 February 2012.10
2.4.1 Intellectual Property Provisions
The only specific Intellectual Property provision in the Malaysia–Chile FTA (MCFTA)11 is found in Article 3.13, under Chapter 3 (relating to trade in goods). This Article provides that Malaysia recognises the geographical indication CHILEAN PISCO, that falls within the scope of protection established in Article 22 of the TRIPS Agreement.12 This recognition is, however, without prejudice to Malaysia’s right to recognise in addition to Chile, the geographical indication PISCO, exclusively for Peru.13
Besides this specific provision, there is a general statement relating to cooperation in various areas, including in relation to the protection of Intellectual Property.14
2.5 Malaysia–India Comprehensive Economic Cooperation Agreement (MICECA)
Malaysia and India established the Malaysia–India Comprehensive Economic Cooperation Agreement (MICECA) on 24 September 2010. The MICECA was signed by both parties on 18 February 2011,15 and came into force on 1 July 2011.16 MICECA is a comprehensive agreement that covers trade in goods, trade in services, investments and movement of natural persons.
2.5.1 Intellectual Property Provisions
Just as in the Malaysia–Chile FTA, there is no specific Intellectual Property chapter in the Agreement. Two mentions of Intellectual Property matters are, however, found in Chapter 4 (relating to customs cooperation) and Chapter 10 (on investment). Article 4.8.3 provides that the Parties shall adopt procedures to enable a right holder, who has valid reason for suspecting that the importation of goods infringing an Intellectual Property may take place, to lodge an application in writing with competent authorities, for the suspension by customs authorities of the clearance of such goods. Such measures must be in accordance with their national legal and administrative provisions in force.
Article 10.7.1 contains mutual promises that the parties will not expropriate or nationalise an investment either directly or through measures equivalent to expropriation or nationalisation (expropriation) except under certain conditions. Article 10.7.6, however, provides that the article relating to the expropriation or nationalisation does not apply to the issuance of compulsory licences granted in relation to Intellectual Property rights in accordance with the WTO Agreement on Trade Related Aspects of Intellectual Property Rights.
2.6 Malaysia–Australia Free Trade Agreement (MAFTA)
On 7 April 2005, Australia and Malaysia agreed to launch negotiations on a bilateral Free Trade Agreement (FTA). Negotiations on the FTA commenced in May 2005 but paused in 2006 to enable both countries to focus on the ASEAN–Australia–New Zealand agreement, and resumed only in August 2009. After 11 rounds of negotiations, the FTA was concluded on 30 March 2012 and was signed on 22 May 2012. The Agreement will take effect from 1 January 2013.17
2.6.1 Intellectual Property Provisions
Provisions relating to Intellectual Property are contained in Chapter 13, the IP chapter.18 It contains a set of minimum obligations which the parties have to adhere to, although a party is free to provide more extensive provisions for, and enforcement of, Intellectual Property rights than those required by Chapter 13, though any such additional protection and enforcement must be consistent with MAFTA’s provisions.19 The principle of national treatment is set out in Article 13.5. There is a provision relating to transparency in Article 13.6. Under this provision, patent and trade mark databases will have to be made available on the Internet.20
2.6.1.1 International Agreements
Under Article 13.4, the parties affirm their rights and obligations with respect to each other under the TRIPS Agreement.21 They also affirm that they have either ratified, or acceded to, the international agreements listed immediately below and ‘as subsequently rectified, amended or modified’:
(a)
the Berne Convention for the Protection of Literary and Artistic Works (1971) (the Berne Convention);
(b)
the Patent Cooperation Treaty (1970);
(c)
the Paris Convention for the Protection of Industrial Property (1967) (the Paris Convention);
(d)
the Convention Establishing the World Intellectual Property Organization (1967); and
(e)
the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Marks (Geneva Act 1977).22
In addition, each party—’subject to the fulfilment of its necessary domestic requirements’—agreed to ratify or accede to the following agreements as stated below ‘as soon as practicable’:
(a)
the WIPO Copyright Treaty (1996);
(b)
the WIPO Performances and Phonograms Treaty (1996);
(c)
the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989); and
2.6.1.2 Trade Marks
In relation to trade marks, an interesting provision is found in Article 13.9.2 which provides for the recognition that trade marks may include signs or marks which are not visually perceptible. A Party may require that trade marks be represented graphically.24 Further, under Article 13.9.3, the parties ‘agree to exchange information on the protection of non-traditional trade marks, including signs which, either wholly or in part, are composed of a shape, a colour, a sound, or a scent, with a view to including non-traditional marks in the first general review of the Agreement’.
2.6.1.3 Geographical Indications
Article 13.10 deals with geographical indications with respect to goods and services, which can be protected either under a trade mark or a sui generis system or ‘other legal means in accordance with its laws and regulations’.25 Article 13.10.6 provides that each party ‘shall publish protected geographical indications’. Lastly, where a party ‘provides the means to protect a geographical indication that identifies goods other than wine and spirits against use in translation or transliteration, it shall do so only where that translation or transliteration conveys or evokes the significance of the geographical indication to which it relates in the territory of that Party’.26
2.6.1.4 Patents
The provisions on patents are laid out in Article 13.11. Article 13.11.1 reiterates that:
Subject to the exceptions set out in Article 27 of the TRIPS Agreement, each Party shall make patents available for any invention, whether a product or process, in all fields of technology, provided that the invention is new, involves an inventive step, and is capable of industrial application.
The Agreement appears to preserve the existing grace period under which any public disclosure by the applicant or his or her predecessor shall be disregarded for the purposes of ascertaining novelty or inventive step, provided such disclosure ‘occurs within 12 months prior to the date of filing of the application in the territory of the Party’.27
Article 13.11.4 provides that nothing in Article 13.11 will limit the scope of exceptions to patentability available in each Party’s laws and regulations at the time that this Agreement enters into force’. This, however, does not amount to much as the present exceptions to patentability found in the Malaysian Patents Act are in consonance with those allowed under the TRIPS Agreement.
2.6.1.5 Copyright
In relation to copyright, there is no mention of any additional subject matter that should be protected or any additional rights that should be included. Provisions relating to ‘Effective Technological Measures’ and ‘Copyright Rights Management Information’ are laid out in Articles 13.14 and 13.15 respectively. Under Article 13.14.1, each party is obligated to provide civil remedies against circumvention of effective Technological measures where such circumvention is performed knowingly or where a person had ‘reasonable grounds to know’. The obligation also extends to the manufacture, import, distribution, offers to the public or other dealings in circumvention devices or services. Criminal penalties must also be provided against persons who are involved in any of the above activities for commercial advantage or financial gain.28 In relation to effective collective management of copyright, Article 13.13 provides that: ‘Each Party shall foster the establishment of appropriate bodies for the collective management of copyright and shall encourage such bodies to operate in a manner that is efficient, publicly transparent and accountable to their members.’
2.6.1.6 Civil and Criminal Remedies
Civil and criminal remedies in relation to the protection of ‘Copyright Rights Management Information’ are mandated under Article 13.15. Article 13.15.2 permits that the criminal procedures and penalties provided in paragraph 1 do not apply to a library, archive, educational institution, or public non-commercial broadcasting entity. Further, Article 13.15.3 provides that each party ‘may provide that subparagraph 1(a) does not apply in relation to anything lawfully done for the sole purpose of law enforcement, national security or the performance of a statutory function.29
Under Article 13.16, subject to certain conditions being satisfied, each party shall provide for ‘a legislative scheme to limit liability of, or remedies that may be available against service providers for infringement of copyright or related rights that they do not control, initiate or direct and that take place through their systems or networks’.30
2.6.1.7 Permitted Exceptions
The permitted exceptions to Intellectual Property rights reflect the standard permitted under the TRIPS Agreement under the 3-step test.31
2.6.1.8 Enforcement Provisions
The enforcement provisions are laid out in Article 13.18.
2.6.1.9 Protection of Encrypted Programme-Carrying Satellite Signals
Article 13.19 specifically deals with the ‘Protection of Encrypted Programme-Carrying Satellite Signals’. Under this Article, parties have to make provision for criminal offences relating to the manufacture, assembly, modification, import, sale or distribution of devices used in decoding an encrypted programme-carrying satellite signal.32 In addition, anyone wilfully receiving and making use of, or further distributing a programme-carrying signal that originated as an encrypted programme-carrying satellite signal whilst:
(i)
knowing that it has been decoded without the authorisation of the lawful distributor of the signal, or
(ii)
with intent to avoid payment of any rate or fee applicable to the provision of that signal shall be liable to criminal penalty.33
2.6.1.10 Miscellaneous Matters
Other miscellaneous matters include provisions on border measures for pirated copyright and counterfeit trade mark goods (Article 13.20), cooperation on enforcement (Article 13.21), and a commitment by the respective central governments that appropriate measures be maintained to ensure that only legitimate computer software shall be used by its agencies, and to encourage its respective regional and local governments to maintain or adopt similar measures (Article 13.17). Also included are harmonisation efforts (Article 13.7), and presumptive validity for registered trade marks, patents and plant varieties (Article 13.8).
3 Concluded Regional Free Trade Agreements
Malaysia, as a member of the Association of South East Asian Nations (ASEAN), is also a party to various regional Free Trade Agreements entered into between ASEAN and India, China, Australia–New Zealand, Korea and Japan respectively. This part of the Chapter will deal with the various intellectual provisions found in the regional Free Trade Agreements thus far concluded
3.1 ASEAN–India Free Trade Agreement (AIFTA)
The Framework Agreement on Comprehensive Economic Cooperation between the Association of Southeast Asian Nations and the Republic of India was signed on 8 October 2003 at the ASEAN Summit in Bali, Indonesia (entered into force 1 July 2004).34 Negotiations on the Agreement on Trade in Goods under the Framework Agreement on Comprehensive Economic Cooperation between the Association of Southeast Asian Nations and the Republic of India and the Agreement on Dispute Settlement Mechanism under the Framework Agreement on Comprehensive Economic Cooperation between the Association of Southeast Asian Nations and the Republic of India were concluded on 13 August 2009.35 The ASEAN–India Trade in Goods Agreement (AITIGA) entered into force 1 January 2010.36 ASEAN and India are currently negotiating a Trade in Services Agreement and a Trade in Investments Agreement,37 the remaining strands of a Free Trade Agreement which will involve a ‘market of almost 1.8 billion people with a combined GDP of USD 2.8 trillion … [with] tariff liberalisation of over 90% of products traded between the two … regions’.38 Comprehensive Rules of Origin for preferential treatment under the ASEAN–India Free Trade Area are established in accordance with Article 7 of the AITIGA and appended in Annex 2 to the Agreement.
3.1.1 Intellectual Property Provisions
Whilst a general undertaking exists within Article 3.8.H of the ASEAN–India Framework Agreement, for the negotiating parties in establishing the Trade In Goods Agreement to include the ‘facilitation and promotion of effective and adequate protection of trade-related aspects of Intellectual Property rights based on existing WTO, World Intellectual Property Organisation … and other relevant agreements’,39 there is no provision on Intellectual Property in the ASEAN–India Agreement on Trade in Goods.
3.2 ASEAN–Japan Comprehensive Economic Partnership Agreement (AJCEPA)
The Framework for Comprehensive Economic Partnership (CEP) between ASEAN and Japan was signed by on 8 October 2003 in Bali during the ASEAN–Japan Summit. Negotiations on the AJCEPA, which commenced in April 2005, were concluded in December 2007. On 19 December 2008, Malaysia made the notification on the completion of its legal procedures necessary for the entry into force of the Agreement on Comprehensive Economic Partnership among Japan and Member States of the Association of Southeast Asian Nations. With this notification, the Agreement entered into force on 1 February 2009 in relation to Malaysia.40
3.2.1 Intellectual Property Provisions
3.3 ASEAN–Korea Free Trade Agreement (AKFTA)
The Framework Agreement on Comprehensive Economic Cooperation between ASEAN and Korea, as well as the Agreement on Dispute Settlement Mechanism, were signed at the ASEAN–Korea Summit on 13 December 2005 in Kuala Lumpur, Malaysia, and came into force on 1 July 2006.42
On 26 August 2006 in Kuala Lumpur, the Economic Ministers of ASEAN and Korea, with the exception of Thailand, signed the Agreement on Trade in Goods of the Framework Agreement on Comprehensive Economic Cooperation between ASEAN and Korea, which entered into force on 1 June 2007.
Negotiations for Trade in Services Agreement were concluded in October 2007. The ASEAN–Korea Trade in Services Agreement was signed at the ASEAN–Korea Summit on 21 November 2007 in Singapore, and entered into force 1 May 2009.
The AKFTA Investment Agreement was signed on 2 June 2009. The ratification process of the Investment Agreement is being undertaken by individual ASEAN Member States (AMS). Malaysia issued the instrument of ratification on 26 June 2009.43
3.3.1 Intellectual Property Provisions
As is the case in the ASEAN–China FTA, there is no specific IP Chapter in all these Agreements. There is only a provision that refers to Intellectual Property found in Article 7 of the Agreement on Trade in Goods of the Framework Agreement on Comprehensive Economic Co-Operation between the Association of Southeast Asian Nations and the Republic of Korea, under which the Parties reaffirm their commitments to abide by the provisions of the WTO disciplines on, among others, Intellectual Property rights.
There is also no reference to Intellectual Property matters in the Agreement on Trade in Services or the Agreement on Investment.
3.4 ASEAN–China Free Trade Agreement (ACFTA)
ASEAN and China signed the Framework Agreement on Comprehensive Economic Cooperation on 4 November 2002 in Phnom Penh, Cambodia. The Framework Agreement, which came into force on 1 July 2003, is an ‘umbrella’ Agreement which provides general provisions on the establishment of an ASEAN–China Free Trade Area (ACFTA) within 10 years. Pursuant to the above, the following ACFTA Agreements have also been signed: Trade in Goods Agreement (29 November 2004, entered into force 1 January 2005),44 Trade in Services Agreement (14 January 2007, entered into force 1 January 2007), and the ASEAN–China Investment Agreement, which was signed on 15 August 2009 and entered into force on 1 January 2010 for all ASEAN Member States and China.45
3.4.1 Intellectual Property Provisions
There is no specific IP Chapter in all these Agreements. There are, however, two provisions that refer to Intellectual Property. The first is found in Article 7.1 of the Agreement on Trade in Goods of the Framework Agreement on Comprehensive Economic Co-Operation between the Association of Southeast Asian Nations and the People’s Republic of China, under which the parties reaffirm their commitments to abide by the provisions of the WTO disciplines on, among others, Intellectual Property rights. Under Article 8 of the Agreement on Investment of the Framework Agreement on Comprehensive Economic Co-Operation between the Association of Southeast Asian Nations and the People’s Republic of China, the parties ‘agree that the provisions of Article 8 on expropriation will not apply to the issuance of compulsory licences granted to Intellectual Property rights in accordance with the Agreement on Trade-Related Aspects of Intellectual Property Rights in Annex 1C to the WTO Agreement’. There is no mention of Intellectual Property matters in the Agreement on Trade in Services.46
3.5 ASEAN–Australia New Zealand FTA (AANZFTA)
The ASEAN, Australia and New Zealand Summit on 30 November 2004 in Vientiane, Lao PDR, agreed to establish a comprehensive ASEAN, Australia and New Zealand Free Trade Area. After several years of negotiation, Economic Ministers of ASEAN, Australia and New Zealand signed the ASEAN–Australia–New Zealand FTA (AANZFTA) Agreement on 27 February 2009 in Thailand. The ASEAN–Australia–New Zealand Free Trade Area came into effect on 1 January 2010.47
3.5.1 Intellectual Property Provisions
The ASEAN–Australia–New Zealand FTA (ANNZFTA) is the only agreement entered into at the ASEAN level which contains a wide ranging chapter on Intellectual Property matters.48
The Intellectual Property chapter is contained in Chapter 13. Besides the usual provisions relating to ‘Objectives’ (Article 1), ‘Definition’ (Article 2), ‘Affirmation of the TRIPS Agreement’ (Article 3) and the ‘National Treatment’ principle (Article 4), the substantive provisions relating to various Intellectual Property subject matters are contained in Articles 5 to 8. The other Articles deal, inter alia, with matters relating to co-operation (Article 9), transparency (Article 10), recognition of transitional periods under the TRIPS Agreement (Article 11), and the setting up of a committee on Intellectual Property (Article 12).
3.5.1.1 Copyright
In relation to copyright, Article 5.1(a) mandates that each party shall provide to authors of works, which include cinematograph films, the exclusive right to authorise any communication to the public of their works by wire or wireless means.49 Parties are also required to provide criminal procedures and penalties at least in cases where a person wilfully infringes copyright for commercial advantage or financial gain.50 Further, each Party should ‘foster the establishment of appropriate bodies for the collective management of copyright and encourage such bodies to operate in a manner that is efficient, publicly transparent and accountable to their members’.51
Further, under Article 5.2(b),’Each Party shall endeavour to provide adequate legal protection and effective legal remedies against the circumvention of effective Technological measures that are used by copyright owners in connection with the exercise of their copyright rights and that restrict acts, in respect of their works, which are not authorised by the copyright owners concerned or permitted by law’.
As in the Malaysian Australia FTA, there is also a provision relating to the commitment by the respective Governments that only legitimate computer software shall be used by their central government agencies, and that they will encourage their respective regional and local governments to maintain or adopt similar measures.52
3.5.1.2 Trade Marks and Geographical Indications
In relation to trademarks and geographical indications, Article 7.1 requires each party to ‘maintain a trademark classification system that is consistent with the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as amended from time to time’. Article 7.4 ‘recognises that geographical indications may be protected through a trademark system’. Where a trade mark predates a geographical indication within the jurisdiction, parties are required to protect that trade mark.53
3.5.1.3 Genetic Resources, Traditional Knowledge and Folklore
Provisions relating to genetic resources, traditional knowledge and folklore are found in Article 8, which provides that ‘each Party may establish appropriate measures to protect genetic resources, traditional knowledge and folklore’.
3.5.1.4 International Agreements
As for the various international treaties relating to Intellectual Property, Article 7 provides that should any party intend to accede to the various treaties, it can seek to co-operate with other parties to support its accession and its implementation.54 Each party requested to assist, if it considers appropriate, shall extend it assistance subject to the availability of resources.55
3.5.1.5 Patents and Industrial Designs
There are no provisions relating to patents and industrial designs.
4 Aborted or Suspended FTA Negotiations
4.1 Malaysia–US FTA
On 8 March 2006, US Trade Representative Robert Portman and the then Minister of International Trade and Industry (Malaysia), Dato’ Seri Rafidah Aziz, announced the start of negotiations on a Malaysia–US FTA (MUSFTA). Since June 2006, seven rounds of negotiations have been held, with the last one being held in July 2008. In July 2009, the then Minister for International Trade and Industry (Malaysia) announced a temporary halt to the negotiations.56 Since then the process seems to have been aborted although there has been no official statement regarding the status of the negotiations. The United States is now concentrating on the on-going Trans-Pacific Partnership (TPP) Agreement.
4.2 ASEAN–European Union Free Trade Agreement
In 2007, the ASEAN and EU Ministers of Economy and Trade agreed to establish a comprehensive FTA to provide for mutual trade and investment liberalization. However, 18 months after the start of negotiation and six rounds of talks later, nothing positive had been achieved. Discussion had not moved to market access commitments and in several areas the parties were still at an exploratory level.57 When those negotiations were suspended in 2009, the EU member states decided, instead, to pursue negotiations towards FTAs with the individual ten countries within ASEAN.58 The EU is now pursuing bilateral FTAs with individual ASEAN member states. To date, they have commenced negotiations with Singapore and Viet Nam. Negotiations with Malaysia commenced in December 2011.59 However, the ultimate objective of reaching an agreement with the ASEAN region has not been abandoned.60
5 On-Going Negotiations
To date, negotiations are on-going for the following FTAs.
5.1 Malaysia–Turkey Free Trade Agreement
Malaysia and Turkey are currently negotiating a Free Trade Agreement, the Malaysia–Turkey FTA (MTFTA). The first Trade Negotiating Committee (TNC) meetings were held from 31 May to 1 June 2010. To date there have already been seven such meetings. It is not known when an agreement can be concluded.61
5.2 Malaysia–Bangladesh Free Trade Agreement
According to an announcement by Bangladesh High Commissioner to Malaysia, A.K.M. Atiqur Rahman, reported in June 2012, Malaysia and Bangladesh are expected to begin negotiations in the near future for a proposed Free Trade Agreement (FTA), the commencement of such negotiations having been verbally agreed by the relevant ministers some 2 years earlier.62
5.3 Malaysia–European Union Free Trade Agreement (MEUFTA)
Malaysia and the EU commenced the first round of negotiations on 6 December 2010 in Brussels, Belgium. As of April 2012, seven rounds of negotiations had been held. The parties hope to conclude the negotiations by the end of 2012.63
5.3.1 Possible Intellectual Property Provisions
While details of the Intellectual Property provisions under negotiation have not been made available for public perusal or comments, it is possible to predict the possible provisions based on other agreements within the region. One good indication would be the Intellectual Property chapter in the European Union–Republic of Korea Free Trade Agreement (EU–Korea FTA).64 The following are the provisions likely to be included in negotiations.
5.3.1.1 Copyright
Extension of the duration of protection: The duration of the copyright in a literary, artistic and musical work will be calculated from the life of the author and for 70 years after his or her death.65 In relation to broadcasts, the term of protection should be at least 50 years from the date of first transmission of the broadcast.66
Artists’ resale right in works of art: As the resale rights in works of art are widely available in all EU countries, this will be a most likely area to be included in the negotiation. In the EU–Korea FTA, such a right has not yet been mandated, the parties undertaking to commence consultations (within 2 years of the FTA’s entry into force) regarding ‘the desirability and feasibility’ of introducing such rights in the future.67
5.3.1.2 Protection of Technological Measures/Protection of Rights Management Information
In relation to protection of technological measures, each party is obligated to provide civil remedies against circumvention of effective Technological measures. The obligation also extends to the manufacture, import, distribution, offer to the public or other dealings in circumvention devices or services. In relation to effective collective management of copyright, each party shall foster the establishment of appropriate bodies for the collective management of copyright and shall encourage such bodies to operate in a manner that is efficient, publicly transparent and accountable to their members. Such provisions are found in the EU–Korea FTA.68
5.3.1.3 Trade Marks
Membership of international treaties: Parties would be obliged to accede to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989) and comply with the Singapore Treaty on the Law of Trademarks (2006) and the Trademark Law Treaty (1994).69
Protection of well-known trade marks: Parties will have to cooperate to ensure effective protection of well-known trade marks, as referred to in Article 6bis of the Paris Convention (1967) and Article 16(2) and (3) of the TRIPS Agreement.70
5.3.1.4 Geographical Indications
Negotiation on geographical indications would include, inter alia, a register listing geographical indications protected in the territory, an administrative process verifying that the geographical indications identify a good as originating in a territory, region or locality of one of the parties, a requirement that a registered name shall correspond to a specific product or products for which a product specification is laid down and there are control provisions applying to production. The scope of the protection for a geographical indication would also be laid down.71
5.3.1.5 Designs
Membership of international treaties: Parties would be obliged to accede to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (1999).
Definition of design and registrability criteria: The definition of a design would conform to that used in the European Design Directive, that is, ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’. A design would only be registrable if it is new and is original or have individual character before the filing date. Subject to certain conditions, an unregistered design will also be protected.72
Duration of protection and relationship to copyright: The duration of protection will be a maximum of 25 years in the case of a registered design, while for an unregistered design, it should be for at least 3 years. There would also be a provision specifying that a registered design is also protectable under copyright law.
5.3.1.6 Patents
Membership of international treaties: Parties would be obliged to accede to the Patent Co-operation Treaty (Washington, 1970, last modified in 2001); the Patent Law Treaty (Geneva, 2000) and the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure (1977, amended in 1980).73
Patents and Public Health: The parties would affirm the importance of the Doha Declaration on the TRIPS Agreement and Public Health adopted on 14 November 2001 by the Ministerial Conference of the World Trade Organization, and that nothing in the Agreement shall be construed so as to impair the capacity of the parties to promote access to medicines.74
5.3.1.7 Protection of Data Submitted to Obtain a Marketing Authorisation
The parties shall guarantee the confidentiality, non-disclosure of and non-reliance on data submitted for the purpose of obtaining an authorisation to put a pharmaceutical product on the market. The period of data protection should be at least 5 years starting from the date of the first marketing authorisation obtained in the territory of the respective parties.75
5.3.1.8 Plant Varieties
The parties shall co-operate to promote and reinforce the protection of plant varieties based on the International Convention for the Protection of New Varieties of Plants (UPOV) as revised on 19 March 1991, including the optional exception to the breeder’s right as referred to in Article 15(2) of the said Convention.76
5.3.1.9 Liability of Intermediary Service Providers
Subject to certain conditions being satisfied, each party shall provide for a legislative scheme to limit liability of, or remedies that may be available against, service providers for infringement of copyright or related rights that they do not control, initiate or direct and that take place through their systems or networks.77
5.3.1.10 Enforcement Measures
Parties would be required to implement border measures for pirated copyright and counterfeit trade mark goods. This obligation also extends to goods which infringe a patent, a plant variety right, a design or a geographical indication.78
5.4 The Trans-Pacific Partnership (TPP) Agreement
Nine countries are presently involved in negotiating the Trans-Pacific Partnership Agreement. They are Australia, Brunei, Chile, Malaysia, New Zealand, Peru, Singapore, United States and Viet Nam. Malaysia participated as a full negotiating member at the third round of negotiations from round from 4 to 9 October 2010 in Brunei.79 To date 13 negotiating rounds have been held, with the fourteenth round scheduled for December 2012.80
5.4.1 The Proposed Intellectual Property Provisions
As is the case in all FTA negotiations, the proposed texts are kept secret and not made available for public comment. However, in the case of the TPP, it is fortunate that a copy of the February 2011 draft IP chapter (hereinafter referred to as Draft IP Chapter) had been made available by California Republican Representative Darrell Issa.81 A perusal of the draft shows that it contains many provisions which are similar to existing FTAs entered into between the United States and Singapore, Chile, Peru, Morocco, and Bahrain. As it is highly unlikely that the other countries involved in the TPP negotiations would seek to impose more onerous Intellectual Property provisions in the proposed agreement, this copy, as well as the various US FTAs mentioned earlier, will form the basis for discussion of the more significant proposal in the proposed IP chapter of the TPP.
5.4.1.1 Membership of International Agreements
In line with the FTAs between the United States and Singapore (2003), Chile (2003), Morocco (2004), Peru (2006), and Bahrain (2006), it is expected that each party would have to ratify or accede to the following agreements by the date of entry into force of the Agreement82:
(a)
Patent Cooperation Treaty (1970), as amended in 1979;
(b)
Paris Convention for the Protection of Industrial Property (1967);
(c)
Berne Convention for the Protection of Literary and Artistic Works (1971);
(d)
Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite (1974);
(e)
Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989);
(f)
Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (1977), as amended in 1980;
(g)
International Convention for the Protection of New Varieties of Plants (1991) (UPOV Convention);
(h)
Singapore Treaty on the Law of Trademarks (2006);
(i)
WIPO Copyright Treaty (1996); and