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What We Do
KASS: Beyond IP Protection – Comprehensive Legal and Strategic Services
KASS offers a wide range of services beyond traditional IP protection. From legal consulting and contract drafting to brand strategy and market analysis, our multidisciplinary team is here to support every aspect of your business. Whether you’re looking to expand your market reach or safeguard your business operations, we provide the expertise you need to succeed in Southeast Asia and beyond.
Frequently Asked Questions
Confidential Information means information that is not in the public domain and that is communicated to others (either verbal or in written form) in confidence. The following are examples of confidential information in the business world:
- Client or customer lists
- Supplier lists
- Contracts with third parties
- Price list for raw materials
- Marketing strategy or plan
- Business strategy or plan
- Composition of material used in products
- Ingredients and recipes
- Salary structure and bonus structure
- Financial and business data
- Internal processes, methods and systems
- Details of proposals or pitches made to potential clients
- Ideas discussed with third parties
Confidential information that covers manufacturing or industrial secrets is also called “Trade Secrets”. This term has been made familiar by brands such as Coca-Cola® and KFC®. Coca- Cola® claims to keep the recipe for its over-a-century-old carbonated drink in a high-security vault in Atlanta, while KFC® claims that it stores its recipe of “11 herbs and spices” in a vault in its headquarters in Louisville.
It should go without saying that information that is confidential must be kept confidential. One cannot claim that the information is confidential if he or she has disclosed the information to many parties unnecessarily. If there is a need for disclosure, the disclosure must be kept limited to only a few parties and even so, a Non-Disclosure Agreement (NDA) or a Confidentiality Agreement should be entered into.
Take the customer list or supplier list for instance; it is understandable that the staff of an organisation would need access to the list for either marketing or operations purposes. However, if the information is confidential, then the organisation must take the responsibility to ensure that reasonable effort is made to limit the access to the information. Perhaps only one or two key employees are provided the password to the databases.
Another example is the terms and conditions of a license agreement. The terms can contain highly confidential information or subject matter that, if leaked to competitors, could sabotage one’s business. Thus, although licensees have access to such terms, effort must be taken to limit third party access to the information and licensees should be strictly warned of the nature of the information.
Generally, when there is a misuse of confidential information, the Court will assess whether the information was treated as a secret by the owner of the information. If the owner did not treat it as a secret, then the information may be found not to qualify as Confidential Information.
For many companies, especially small and medium sized businesses, their Unique Selling Point (USP) is usually something they offer that is better than their competitors. Either their price list is more competitive or they have created a business or marketing strategy that is extraordinary or a customer list that is reliable and with recurrent purchases and so on.
Where the business advantage cannot be protected by way of a registrable right (like patent, copyright and design), the only practicable way for the business to continue to maintain its advantage in its respective markets is to keep the information confidential.
The misuse of confidential information is termed “Breach of confidence”. The owner of the confidential information can sue the party that misused the information in Court for damages.
However, it is important to remember that once the information has been leaked out to the public, the information is already out there and cannot be made secret again. So although the owner may succeed in Court and win damages for the breach of confidence, the information that was meant to be confidential for an indefinite period of time is no longer confidential. Third parties, including competitors, will be able to use the confidential information to their benefit and the owner cannot sue them as the information is already in the public domain.
Therefore the best practice is for the owner to share information with a limited number of people and to take extreme and effective measures to ensure the information is kept as a secret (mark the documents as “Confidential”, repeatedly inform persons exposed to the information that it is confidential, ensure they sign NDAs, change passwords to the access regularly, etc.).
Frequently Asked Questions
Image Rights provide celebrities or the creators of famous fictional characters with the exclusive right to merchandise their “character/personality”. It affords protection to its owner by preventing the unauthorized publicizing of his/her name, likeness and photos.
- Client or customer lists
- Supplier lists
- Contracts with third parties
- Price list for raw materials
- Marketing strategy or plan
- Business strategy or plan
- Composition of material used in products
- Ingredients and recipes
- Salary structure and bonus structure
- Financial and business data
- Internal processes, methods and systems
- Details of proposals or pitches made to potential clients
- Ideas discussed with third parties
Confidential information that covers manufacturing or industrial secrets is also called “Trade Secrets”. This term has been made familiar by brands such as Coca-Cola® and KFC®. Coca- Cola® claims to keep the recipe for its over-a-century-old carbonated drink in a high-security vault in Atlanta, while KFC® claims that it stores its recipe of “11 herbs and spices” in a vault in its headquarters in Louisville.
It should go without saying that information that is confidential must be kept confidential. One cannot claim that the information is confidential if he or she has disclosed the information to many parties unnecessarily. If there is a need for disclosure, the disclosure must be kept limited to only a few parties and even so, a Non-Disclosure Agreement (NDA) or a Confidentiality Agreement should be entered into.
Take the customer list or supplier list for instance; it is understandable that the staff of an organisation would need access to the list for either marketing or operations purposes. However, if the information is confidential, then the organisation must take the responsibility to ensure that reasonable effort is made to limit the access to the information. Perhaps only one or two key employees are provided the password to the databases.
Another example is the terms and conditions of a license agreement. The terms can contain highly confidential information or subject matter that, if leaked to competitors, could sabotage one’s business. Thus, although licensees have access to such terms, effort must be taken to limit third party access to the information and licensees should be strictly warned of the nature of the information.
Generally, when there is a misuse of confidential information, the Court will assess whether the information was treated as a secret by the owner of the information. If the owner did not treat it as a secret, then the information may be found not to qualify as Confidential Information.
In most countries, Image Rights are not recognized as a distinct area of law. As such, registration of Image Rights is almost unheard of and only available in a handful of countries. To enforce their Publicity Rights, a person would have to resort to the law of Industrial Design, Copyright, Trademark, and most often the tort of Passing Off.
Yes, it is possible to rely on your registered IPRs to enforce your Image Rights. Your registered trademarks may be relied upon to protect names, logos and slogans. If you have Registered Industrial Designs on your models or figurines, you may take infringement action against another party for re-producing those designs without your consent. Likewise, to protect pictures, photos and illustrations, you may rely on your copyright.
However, the protection provided by these IPRs may be inadequate, as it prevents only identical or near identical copying of the registered material.
The tort of Passing off is usually the preferred legal recourse in the enforcement of Image Rights. Passing Off prevents the misuse of one’s reputation by a third party. Specifically, it prevents a third party from misrepresenting to the public that a celebrity or media person is endorsing the third party’s products or services, where in actual fact there was no such endorsement.
One of the advantages in claiming Passing Off is that the action need not be based on any registered IPRs. This also gives the court more elbow room to maneuver.
In most countries, Image Rights are not provided by any specific legislation, so the duration of protection will depend on the duration of the IP laws relied upon by the owner. For Passing Off, generally the Courts have yet to accept that the Image Rights will survive beyond the lifetime of a person.
The Courts in Malaysia have not been asked to decide on the existence of Image Rights. However, the Malaysian Court would normally look to the decisions of the UK case laws as persuasive precedents.
Frequently Asked Questions
Our product development services are designed to facilitate the creation of new products or solutions that do not infringe those protected by existing patents. We have assisted clients in two types of situations:
1. Client intending to enter into a new market faces at least one other patent in the same field or product line
Here, the client wanted to enter into the portable beverage dispensing container market but there were several patents in the same product line. The client was not interested to obtain any licence from the prior patent holders. With a team comprising of the intended user, manufacturer and product designers, we analyzed subsisting patents, lapsed patents, and other documents in the public domain. The team developed a couple of new beverage containers. Clients are testing the prototypes before deciding which model to take to commercialization. Patent applications will be filed for the various models.
2. Client faced with a potential patent infringement suit, client has no choice but to develop a new product which does not infringe the subject patents
The client, involved in the electronic products industry, was faced with a patent infringement suit in respect of the product it was manufacturing. As a patent licence was refused, clients worked with us to develop a new product which had the same functions, but did not infringe any of the claims of the previous patent. Within a period of three weeks, a new non-infringing product was developed.
Should you be in a similar situation, do not hesitate to contact us. With years of experience and expertise in various fields of technology, we will be able to provide comprehensive and constructive advice on the development of alternative products to avoid patent and industrial design infringement.
Frequently Asked Questions
In Malaysia, the courts are generally unwilling to accept that there is a general principle of invasion of privacy. However, there have been occasions where the courts did find that a person’s privacy had been intruded, especially where there is a case for breach of confidence (e.g., doctor-patient relationship).
There are various laws that a person can rely on to protect his privacy. For example, if there is a pre-existing relationship (contractual/professional) between the victim and the perpetrator, the perpetrator by divulging certain private information about the victim may be liable for breach of confidence. If another person is making baseless accusations against you to a third party, you may also have an action in defamation. Misuse of another person’s personal details may also be a criminal offence in Malaysia under a new piece of legislation, the Personal Data Protection Act 2010 (PDPA).
The PDPA protects personal data from being misused. Personal data is defined as any information collected or processed in connection to a commercial transaction by any equipment operating automatically (e.g., ATM, Computers) which is capable of identifying a person (a.k.a. data subject). The above definition will include such information as names, addresses, identification card/passport numbers, email addresses, telephone numbers, as well as banking details.
The PDPA prohibits data users from collecting and processing a data subject’s personal data without his or her consent. The Act also prohibits data users from disclosing or making its data available to any third party without the consent of data subjects. It requires data users to inform data subjects on the purpose of its data collection, the class of third party who may have access to the data, and the choices that data subjects have on how the data is to be used.
The Act also imposes a duty on data users to put in place adequate security and indemnity measures to prevent the theft, misuse, unauthorized access, accidental disclosure, alteration or destruction of data under their care. The Act also provides for the rights of data subjects to access, modify and update their personal data.
Yes, the PDPA does not apply to credit reporting business, data collected/processed for the prevention or detection of crime, for the purpose of preparing statistics and research, in accordance with a court order or for the purpose of discharging regulatory functions. The Act also does not apply to personal data that is processed outside of Malaysia.
Frequently Asked Questions
Intellectual Property (IP) rights are negative rights in that they are rights to exclude others from making, using or selling the products or services that incorporate your patent, design, trademark or copyright.
As all businesses have some sort of IP subsisting in them, and all businesses – no matter the industry – have competitors who are constantly trying to outdo each other to snag more market share and become a leader in their respective industry, it is only natural that infringement of IP (either innocent or deliberate) and various other IP-related lawsuits occur.
At KASS, we help our clients use their IP rights as a tool to prevent others from entering their market domain and assist clients against attacks they may face from others who allege that our clients are infringing third party rights. Although we do not represent clients in Court ourselves, we have a team of trademark and patent attorneys in our associated law firm, Kandiah & Sri, who appear in Court in their dark robes, seeking justice for our clients. They are experts in IP litigation and come with years of experience in the field.
Apart from offering legal representation in Court, Kandiah & Sri provides IP litigation advice and handles advisory work, negotiations, drafting of commercial and legal documents, all the way to the enforcement of your rights, as well as immediate solutions such as injunctions, agency enforcements and so forth to manage and protect your exclusive rights from any unlawful interferences.
We work with Kandiah & Sri to provide the best possible legal protection for our clients. We assist with conducting prior art patent searches at the relevant Patent Offices, invalidity searches, identifying suitable expert witnesses, handling the research and documentation before a case goes to trial, and more.
Litigation support is crucial as it allows the trademark and patent attorney to focus on the case at hand while all the legwork and research is handled by the support team. If the collected data, evidence and expert witnesses’ testimony is not in favour of the client, we will work with Kandiah & Sri and strive to negotiate an out-of-court settlement for the client.