Technology today moves very fast. Bythe end of 2011, Malaysia report-edly had more than 17.5 million in-ternet users, including 5 millionbroadband users, 2.5 million wire-

less broadband users and 10 million 3G sub-scribers. Internet has taken globalisation to a newlevel, enabling people to shop, search for informa-tion and look for entertainment any time of theday in any part of the world. Online marketing hastherefore blurred the boundaries of geographiesand time.

The change in the way the world conductsbusiness has also introduced a new powerfulmedium for advertising. The rise of the internethas given birth to some very successful web sites

such as Ali Baba, eBay and in Malaysia, www.le-long.my and www.mudah.my.

This article aims to highlight to an advertiserthe components in a website that are eligible forprotection under the IP regime in Malaysia andthe emerging issues arising from internet adver-tising, based on decisions in the US and Europe.

IP in a web siteThe most well-known method of access to the in-ternet is the World Wide Web. The Web uses ahypertext formatting language called hypertextmark-up language (HTML), and programs thatbrowse the web can display HTML containingmaterials comprising one or various compo-nents such as textual information, still images,2

WWW.MANAGING IP.COM

IP and onlineadvertisingJanet Toh and Ameet Kaur Purba of ShearnDelamore & Co explain the copyright andtrade mark issues to watch out for whenadvertising on the Internet

MALAYSIA

moving images, sound recordings and music.The following components in a web site mayenjoy IP protection:

Domain name With the advent of e-commerce, the domain namehas become an invaluable asset and is consideredthe equivalent of a trade mark or trade name usedto identify a commercial service or product on theinternet.

Computer programsComputer programs secure copyright as literaryworks under the Malaysian Copyright Act. Insome jurisdictions, patents have been relied on toprotect a computer program that is neither a pure

mathematical algorithm nor a mental step andwhich goes beyond the normal physical interac-tions between the program (software) and thecomputer (hardware) on which it is run.

Creative contentProtection of textual information is achieved viacopyright as a literary work. Translations are pro-tected under copyright as derivative works whichare protected as original works. Photographs, artand graphics are accorded copyright protectionunder Malaysian law as artistic works.

IconsAn icon that is distinctive may be afforded trademark protection because icons can be used to3

AS IA PAC I F IC & M IDDLE EAST I P FOCUS

MALAYSIA

identify and distinguish one’sproducts or services from that ofa competitor. There is also thepossibility that an icon being anartistic or creative graphic maybe eligible for copyright protec-tion, as the icon’s pictorial na-ture or its underlying computercode may provide a basis forcopyright.

In the design case Apple vDesign Registry (2001) the Eng-lish Court went as far as to findthat computer icons were regis-trable as designs in so far as theicons were features of a pre-loaded computer operating sys-tem. It was held that all the iconswere registrable on the basisthat the computer screen was anarticle, and that the icons werepart of its design built into thesoftware as part of an industrialprocess.

Moving images may enjoycopyright protection as films.Films are broadly defined in sec-tion 3(1) of the Copyright Act1987 as “any fixation of a se-quence of visual images on mate-rial of any description, whethertranslucent or not, so as to be ca-pable by use of that materialwith or without assistance of anycontrivance:

being shown as a moving•picture; orbeing recorded on other ma-•terial, whether translucentor not by the use of which itcan be so shown,and includes the sounds•embodied in any sound-track associated with afilm”.Sound recordings and musical works are also

protected as copyright in Malaysia.

Screen displays and user interfaces Several cases have held that user interfaces areconsidered part of a computer program. Thereis a possibility that the screen display can be acopyright work independent of the computerprogram generating it. The look and feel test hasbeen applied to screen displays as works ofcopyright on their own, irrespective of the un-derlying program. So it is important not to copya screen display to avoid any infringementclaims.

The layout and visual arrangement of a web-site in the typographical arrangement of the text

and the juxtaposition of text andphotographs, images, links,graphics and headlines, is also aright which the publisher cancontrol the reproduction of if thetypographical arrangement hasbeen published. This right pro-tects the typographical layout ofthe edition as in the case of news-papers, the appearance of thepage and “other aspects of pres-entation, such as juxtaposition oftext and photographs and use ofheadlines”.

The components aboveform the raw ingredients of aninternet broadcast. All thesecomponents together form apackage that creates a multime-dia ensemble. The packaging ofthese components on the inter-net can raise further IP issues asa copyright owner has the exclu-sive right to control the sendingof the package over the internet.Under the Copyright Act, inter-net broadcasts are not groupedtogether with the traditionalbroadcasts in radio and televi-sion, rather the Act can be readas treating internet broadcastsas a “communication to the pub-lic”, which refers to the trans-mission of a work or liveperformance through wires orwirelessly to the public, includ-ing the making available of awork or live performance insuch a way that members of thepublic are able to access it froma place and at a time individu-ally chosen by them. Advertisersmust therefore be careful whentransmitting materials throughthe internet.

Emerging issues

Domain name disputesOne of the first areas in which trade mark issuesbegan to arise in connection with the internetwas in the use of a trade mark in a domainname. Domain name disputes arose because ofthe first come, first served rule in the applica-tion of domain names as well as the worldwideuse of domain names without regard to trademark classes or national registrations. Addition-ally there can be no two identical domainnames on the internet and a conflict will natu-rally arise when a company chooses a namethat has already been registered as a trade mark4

WWW.MANAGING IP.COM

MALAYSIA

Janet TohJanet Toh graduated with an LLB from theUniversity of Bristol and is a graduate ofthe National University of Singapore andholds an LLM. She also obtained a certifi-cate of legal practice. She was called to theMalaysian Bar as an advocate and solicitorof the High Court of Malaya in 2002.

Janet focuses on IP and technology is-sues in a variety of transactions and hasworked on a range of agreements, includ-ing distributorship, licensing, outsourcing,service and consultancy agreements. Shehas advised clients on IP protection andownership, advertising, consumer protec-tion, copyright, domain names, e-com-merce, franchise, gaming, regulatoryapprovals for food and drugs, and telecom-munications issues. Her practice also cov-ers IP and IT-related corporate work, andshe has conducted due diligence for vari-ous acquisition projects.

She is the president of the Malaysianchapter of LES and is a member of theMalaysian bar.

by another company. It alsobegan to dawn upon manytrade mark owners that spacein this frontier is limited. Whilethe total number of domainnames may be infinite, as apractical matter a trade markowner will only find a limitednumber of useful domainnames.

Malaysian courts havedemonstrated that they are pre-pared to adopt the UK Court ofAppeal’s judgment in BritishTelecommunication v One in aMillion (1998) to assist plaintiffswhose established corporate orbrand names have been hi-jacked by so-called cybersquat-ters, by expanding the law ofpassing off to cover situationswhere the defendant is“equipped with or is intending toequip another with an instru-ment of fraud”. In the case ofPetroliam Nasional Bhd(Petronas) v Khoo Nee Kiong(2003), the Malaysian HighCourt granted an interlocutoryinjunction to restrain the defen-dant and its agents from certainacts in relation to any domainname which contained the plain-tiffs’ mark, Petronas, and com-pelled the defendant to transferthe domain namepetronasgas.com to the plaintiffs.The court found there was athreat of passing off and trademark infringement and was sat-isfied that there was a likelihoodof confusion in the minds of thepresent and potential consumersof the plaintiffs’ products,thereby resulting in irreparableinjury and damage to the plaintiffs’ trade, busi-ness and goodwill.

The Regional Centre for Arbitration KualaLumpur provides dispute resolution underMYNIC’s Domain Name Dispute Resolution Policy(MYDRP) and Rules, by providing online disputeresolution services for resolving disputes betweenthe registrant of a the .my top-level domain (TLD)and a third. The MYDRP adopts the same tests asIcann’s dispute resolution policy, which providesthat the complainant will succeed if it can estab-lish the following elements:

The manner in which the disputed domain•name is identical or confusingly similar to atrade mark or service mark in which the com-plainant has rights; and

The disputed domain name•should be considered as hav-ing been registered or usedby the respondent in badfaith.With the advent of an ad-

ministrative forum for resolvingdisputes over domain namesand the recognition of the law ofpassing off to cover cybersquat-ting situations, the law regardingdomain names has becomemore settled. An advertiser inchoosing a domain name mustmake sure that he does notchoose a domain name that coin-cides with a well-known or rep-utable trade mark.

MetataggingSometimes advertisers maychoose to use metatags to de-scribe what is available on itssite. A metatag is an invisiblecode that enables internet searchengines to match a website to asearch query. In the UnitedStates, the doctrine of initial in-terest confusion has been usedas a basis to find trade mark in-fringement. In the UK, case lawseems to suggest that the use ofa registered trade mark or a sim-ilar mark in a metatag does notnecessarily constitute trademark infringement or passingoff. The trade mark owner mustshow that there is indeed confu-sion and upon proving that, es-tablish infringement.

Under Malaysian law, sec-tion 38 of the Trade Marks Act1976 provides that a registeredtrade mark is infringed when athird party without any right to

the mark uses one which is identical to the regis-tered mark or so similar as is likely to deceive orcause confusion, rendering use of the mark likelyto create an association with the goods and serv-ices of the registered proprietor.

It is anticipated that Malaysian courts, in de-ciding whether there is trade mark infringementin the use of metatags in websites, will determinewhether there is confusion by importing a refer-ence to the registered proprietor’s goods or serv-ices. There is a possibility that Malaysian courtswill, in determining confusion, take into accountthe nature of use of the trade mark by the adver-tiser and whether the advertiser and the trademark owner are in direct competition. Where boththe advertiser employing the metatags, and the5

AS IA PAC I F IC & M IDDLE EAST I P FOCUS

MALAYSIA

Ameet Kaur PurbaAmeet Kaur Purba is a senior legal assistantin the IP department of Shearn Delamore &Co. Ameet graduated with a LLB degree inlaw from the University of London. She wasadmitted as an advocate and solicitor of theHigh Court of Malaya in 2000.

Her area of practice is intellectual prop-erty: trade marks, copyright, industrial de-signs and patents. She focuses primarily onall aspects of trade mark prosecution,searches and advises on registrability andtrade mark opposition proceedings. Shealso advises clients on the protection andmaintenance of their IP rights includingIP-related agreements. Her experience goesfurther, advising clients on advertising,consumer protection, copyright, domainnames, gaming, regulatory approvals forfood and drugs, and telecommunication is-sues. She has experience in advising amultinational telecommunication provideron IT agreements. Ameet has also advisedcompanies on privacy concerns relating tothe collection and use of client data andconducting data protection audits for vari-ous entities to ensure data protection com-pliance in respect of the collection, storageand use of customers’ personal data.

Ameet is the secretary of AIPPIMalaysian chapter.

trade mark owner, are in different fields of activi-ties, the threshold for determining liability, fromthe point of view of the authors, should bewhether the registered mark is sufficiently fa-mous to warrant protection. This is because themore famous the mark is, the more likely it is thatthe consumer will associate it with the owner.

Keyword advertisingThe emergence of Google Adwords has sparkedoff controversy on whether the sale of trade marksas advertising keywords infringes the rights oftrade mark owners. The problem arose becausetrade mark owners were complaining of theircompetitors purchasing their trade marks so thattheir competitors’ web sites would appear as spon-sored links on the search results whenever theuser entered the relevant trade mark. Brand own-ers were upset because they felt that these adver-tisers were capitalising on the goodwill of theirmarks to gain publicity. Some of these advertiserswere selling a competing or counterfeit product.

The Court of Justice of the EU (CJEU) inGoogle France v LVMH (2010) took the approachthat brand owners cannot in general prevent theirmarks from being purchased as key words. How-ever this case suggests that brand owners do havethe right to bring proceedings for trade mark in-fringement where a likelihood of confusion andassociation can be shown between the advertiser’swebsite and the brand owner’s website. Furtherthe CJEU held that the test is whether the functionof indicating origin of the mark would be ad-versely affected if the advertisement does not en-able a normally informed and reasonablyattentive internet user (or with difficulty) to ascer-tain whether the goods or services originate fromthe proprietor of the trade mark or the third party.

Should the issue of keyword advertising faceMalaysian courts, it is anticipated that the Courtswill approach it as regards the current provisionsof the Trade Marks Act, where in all likelihoodthey will hold that there is trade mark infringe-ment if the use of the trade mark as a keywordgives rise to a likelihood of confusion, and importsa connection to the goods or services of the regis-tered proprietor. Assuming the Malaysian judgesare minded to apply the test in Google France, theywill need to assess if there is an unauthorised useof a registered mark on goods of the granted reg-istration in the course of trade, if such use were ina sponsored link or advertisement, and whethersuch use imports a reference to the unauthoriseduser.

While it appears that the courts are unlikelyto rule Google Adwords illegal, in light of the un-certainties with regards to keyword advertising itwill be prudent for advertisers to ensure that theiradvertisements clearly show that they are not theproprietor of the trade marks. In addition, adver-tisers or operators of online auction sites must

warn their traders of the dangers and their poli-cies in dealing with counterfeit goods.

Linking and framingThe issue of whether deep linking violates trademark laws was raised in the US case of Ticketmas-ter v Tickets.com (2000) where the court held thatdeep linking, without a showing of the likelihoodof confusion, was not necessarily an act of unfaircompetition, although it might, in appropriate cir-cumstances, be an act of passing-off or false adver-tising. In the Singapore case of Catcha.com vPacific Internet (2000), the plaintiff went as far asto allege that the defendant in providing a link tothe subsidiary pages of the plaintiff’s website hadcommitted the common law of trespass.

Whilst generally courts have been reluctantto rule deep linking to be an infringement, careshould be taken when an advertiser chooses tocreate a link on its website to another website be-longing to a third party. Advertisers should as faras possible obtain consent from the third partyprior to including a deep link to an internal pageof a third-party website, because this may meanbypassing the content, notices, advertisementsand other special deals which a third party mayhave included on its home page.

Similarly advertisers must be careful whendisplaying frames on their websites, as this maygive rise to trade mark implications as the displayof the “framed site” on the advertisers’ site mayconfuse users as to its origin and give rise to acause of action under passing off.

Ancillary laws to considerFinally, advertisers should be aware of the ancil-lary laws affecting or relevant to advertising inMalaysia, including the Communications andMultimedia Act 1998. The Malaysian Communica-tion and Multimedia Content Code also serves asa guideline to all contents (including advertise-ments) that are disseminated through electronicmeans and including television, radio and onlineservices. Malaysia has also passed the PersonalData Protection Act 2010. Once that Act is in force,advertisers have to be careful when collecting thepersonal data of customers as the Act regulates theprocessing of personal data in commercial trans-actions. The Ministry of Domestic Trade Con-sumers and Co-operatives may invoke provisionsof the Trade Descriptions Act 2011, which statesthat it is an offence for a person to supply or offergoods to which a false trade description is applied.

These issues are just some of the potential IPchallenges arising from the use of the internet asan advertising medium. In order to comply withMalaysian laws, advertisers need to be vigilant inmonitoring activity on their trading platform. Co-operation is paramount and advertisers ought totake appropriate action once they are notified ofany infringing material on their website. 6

WWW.MANAGING IP.COM

MALAYSIA