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Intellectual Property Protection in Malaysia

Intellectual Property (IP) rights are territorial in nature and registrations in Hong Kong or another jurisdiction are not automatically enforceable in other jurisdictions. Hong Kong companies are advised to register their IPs as soon as practical. Malaysia has a comprehensive and robust IP legal framework and performs well in international comparisons of IP jurisdictions. In the 5th Global IP Index Report (2016) by Taylor Wessing, Malaysia was ranked 15th out of 43 jurisdictions.

The Intellectual Property Corporation of Malaysia (MyIPO), an agency under the Ministry of Domestic Trade, Co-operatives and Consumerism, oversees the IP framework in the country. Key information on main IP rights, namely patents, designs, trademarks and copyright, are provided in the table below, while information on protection of integrated circuits can be found on the MyIPO website.

Overview of IP Rights in Malaysia

Patents and Utility Innovation

Scope

A patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem. A utility innovation is an exclusive right granted for a “minor” invention which is not required to satisfy the test of inventiveness as in the case of a patent.

Patents are regulated by the Patents Act 1983.

Duration

A patent is protected for 20 years from the filing date, subject to annual renewal fees.

A utility innovation is protected for 10+5+5 years from the date of filing subject to use and payment of annual renewal fees after the second year.

Registration and Fees

Applications can either be submitted manually or electronically through the IP Online Portal. Further information can be found on MyIPO website with a flowchart showing the application process.

A schedule of fees is available on the MyIPO website and fees are higher for manual than electronic applications.

Malaysia is a member of the following international conventions regulating patents: Paris Convention, Patent Cooperation Treaty (PCT), ASEAN Patent Examination Cooperation (ASPEC) and the Patent Prosecution Highway (PPH). Time and resources could be saved by processing patent applications in multiple jurisdictions through these routes.

Industrial Designs

Scope

An industrial design means features of shape, configuration, pattern or ornament applied to an article by any industrial process which in the finished article appeal to the eye and are judged by the eyes.

Industrial designs are regulated by the Industrial Designs Act 1996.

Duration

A registered industrial design is given an initial protection period of five years from the date of filing and protection is extendable for a further four consecutive periods of five years each, resulting in a maximum protection period of 25 years.

Registration and Fees

Applications should be submitted to MyIPO either manually or electronically through the IP Online Portal. The application process as well as a fees schedule (fees are higher for manual applications) are detailed on the MyIPO website.

Trademarks and Geographical Indications (GIs)

Scope

Trademark is a sign which distinguishes the goods or services of one trader from those of another. A mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination of these. A GI is a sign used on products that have a specific geographical origin and possess qualities or a reputation due to that origin.

Trademarks are regulated by the Trade Marks Act 1976 and Trade Marks Regulations 1997. GIs are regulated by the GI Act 2000 and GI Regulations 2001.

Duration

Registered trademarks or GIs are valid for ten years and may be renewed every 10 years.

Registration and Fees

Applications for both trademarks and GIs can be completed manually or electronically. Further information is available on the MyIPO website for trademarks and GIs.

Malaysia has yet to accede to the Madrid Protocol and is currently revamping its Trademarks Act with plans for accession by 2018. Meanwhile, trademark applications can only be processed through Malaysia’s IP office.

Copyright

Scope

Copyright protects literary, musical and artistic works, films, sound recordings, broadcasts and derivative works. In Malaysia, copyright protection is regulated by the Copyright Act 1987.

Duration

50 years after:

  • Author’s death (literary, music and artistic works)
  • The work was published (film, sound recordings and performances)
  • The broadcast was first made

Registration

Copyright is automatically protected with no registration required. However, MyIPO does allow voluntary registration and copyright owners are recommended to use the Copyright Voluntary Notification as a prima facie evidence for proving copyrighted works. A flowchart for voluntary registration, available on the MyIPO website, lists the steps that should be followed.

Enforcement of IP Rights

Under the relevant IP Acts, enforcement of IP rights can be exercised via three main avenues:

1. Customs to detain goods: There is no system available for registering IP with customs for detaining counterfeit products. Instead, a complaint must be lodged to MyIPO to invoke a seizure. When lodging a complaint, proof of ownership of the trademark along with information on the goods and shipment must be provided to furnish evidence of counterfeit infringement. Subsequent to this application, a civil suit should be filed to obtain an order for seizure of infringed goods. If a civil suit is not filed, the person that owns the seized goods may apply to the Court for an order of compensation against the company.

2. Civil litigation: Rights owners can file a civil suit in the High Court, where the usual result is for an injunction and damages to be paid to the rights owner.

3. Criminal enforcement: A complaint can be lodged with the Enforcement Division (ED) of the Ministry of Domestic Trade, Co-operatives and Consumerism. Evidence has to be provided to the ED to prove ownership of rights, along with an investigation report to show the infringing activity, and a letter of complaint.

 

A Practical Guide to Doing Business in Malaysia

  1. Regulatory Environment
  2. Establishing a Presence
  3. Intellectual Property Protection
  4. Staff Recruitment
  5. Tax Considerations
  6. Import/Export Procedures
  7. Further Information


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