Malaysia

Trade Mark

Summary

Malaysia is a member of the World Intellectual Property Organization (WIPO) and a signatory to the Paris Convention which governs the intellectual property rights. Malaysia is also a signatory to the Agreement on Trade Related to Aspects of Intellectual Property Rights (TRIPS) signed under the auspices of the World Trade Organization (WTO).

In order to facilitate the trademark registration, Malaysia has agreed to the Nice and Vienna Agreements on June 28, 2007 which were enforced on September 28, 2007.

Trade mark protection in Malaysia is governed by the Trade Marks Act 1976 (“the Act”) and the Trade Marks Regulations 1997.

The Act provides protection for registered trade marks and service marks in Malaysia. Once the trademark is registered, no third party other than the proprietor or authorized users can use the trademark. The Act also provides on infringement action that can be initiated against infringer and how the trademark proprietor has the rights to deal, assign or license the trademark.

Registrable marks

1. A registrable trademark must contain or consist of at least one of the following:-

2. The name of an individual, company or firm represented in a special or particular manner;

3. The signature of the applicant for registration or of some predecessor in his business;An invented word or words;

4. A word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname;

5. Any other distinctive mark.

Marks in Colours and Series of Marks

It is possible to limit the colour of a trademark and a trademark registered in black and white is deemed registered for all colours. Series of Marks is allowed in Malaysia under the Act and it gives a wider protection to the trademark.

Term of Protection

Trademark registration in Malaysia is valid for ten (10) years and can be maintained permanently as long as it is renewed every ten (10) years.

Protection of Unregistered Trademark

Unregistered trademark can be protected under the common law tort of passing off. For any infringement case being brought by the plaintiff under passing off, the plaintiff must be able to establish and prove that there was goodwill or reputation attached to the goods or services; misrepresentation; and damages.

FAQ

T1: How long will it take to conduct a trademark search?

5 - 7 working days.
T2: Does Malaysia use the international classification?

Yes.
T3: Are there any goods or services for which the mark cannot be registered?

No.
T4: Can a trademark be registered in the name of more than one applicant ( i.e. joint application)? If so, what are its requirements?

Yes, a statutory declaration duly signed and notarized in the name of all the applicants.
T5: Can an application be filed without its complete documents? If yes, what is the deadline for filing the documents?

Yes, as long as the following documents is submitted within certain period from the filing date:-

(1) Statutory Declaration – 6 months;

(2) Priority Document – 3 months;

(3) Certified English Translation of the trademark – 6 months.
T6: May priority be claimed under the Paris Convention?

Yes, within six (6) months from the filing date of earlier application.
T7: What is the term of protection of a trademark? From what date is it calculated?

A trademark registration is valid for ten (10) years from the date of filing/priority and can be renewed every ten (10) years.
T8: In case a trademark is not renewed in due time, and another company registers the same trademark, can the original owner oppose the registration?

Yes, the original owner can rely on his common law rights of first use.
T9: If the trademark has been filed incorrectly in the first, what documentation would be required to amend the official register to show the correct details?

Any amendment on the trademark that is still pending for registration, the applicant can submit Form TM26 together with the prescribed fees.
T10: Is use required before registration or for maintaining the registration in force?

Use is not required before registration but it may be subject to cancellation by any third party if they can prove that there has been non-use for a continuous period of at least three (3) years.
T11: Can the assignment of an application be recorded?

Yes. If the assignment is filed when the trademark is still pending for registration, it will only be recorded once the trademark is registered and the registrar will issue the trademark registration certificate directly in the name of Assignee.
T12: Is recording a license agreement compulsory? What are the consequences of non-recordal?

No
T13: Can recordal such as change of name, address, merger, assignment, license, etc., be made against pending applications?

Yes.
T14: Can an assignment be made with or without the goodwill?

The assignor can choose to assign the trademark to the Assignee either with goodwill or without goodwill.
T15: Can the trademark application be opposed and what is the opposition period?

Yes, within two (2) months of the official gazette date.
T16: Can unregistered trademark be protected in Malaysia?

Yes, under the common law tort of passing off.

Malaysia IP Procedures & Filling Requirements

Patent

Filing Requirements

1. A duly executed Appointment of Patent Agent (simply signed and original is required) – Form 17.

2. Name, address and nationality of the applicant(s).

3. Name and address of each of the inventors.

4. A description of the invention with drawings, if any.

5. A claim or claim.

6. Abstract.

7. If priority is claimed, please provide the country, application number, and filing date of the basic application. Certified copies of the priority application are NOT required.

8. A brief statement as to how the applicant derived the rights to the invention i.e. by virtue of contract of employment.

Annuity

1. Particulars of the patent, i.e patent number, certificate number, date of grant, full name and address of the owner, annuity due date and which year of annuity (i.e. 2nd or 20th year).

2. The relevant application form(s).

Recordal of Change of Name/Address

1. Particulars of the Patent, i.e patent number, certificate number, date of grant, full name and address of the applicant. Updated information on the new name and/or address of the Applicant.

2. For a company, please provide the supporting documents/certificate on the change of name and/or address issued by the relevant authority on company registration in the applicant’s country.

3. The relevant application form(s).

Recordal of Assignment

1. Particulars of the patent, i.e patent number, certificate number, date of grant, full name and address of the owner. Full name and address of the assignor and assignee.

2. Copy of Deed of Assignment (DOA).

3. The relevant application form(s).

Recording of License Agreement

1. Particulars of the patent, i.e patent number, certificate number, date of grant, full name and address of the Owner.

2. Full name and address of the Licensor and Licensee.

3. Copy of License Agreement.

4. The relevant application form(s).

FAQ

P1: Can a patent search be conducted?

Yes.

P2: Can convention priority be claimed? (Paris Convention)

Yes. The priority claim can be filed within twelve (12) months from the filing date of earlier application in any other country.

P3: What is the term of protection of a patent and from which date is it calculated?

For an application filed on or after 1 August 2001, the patent granted is valid for 20 years from the filing/priority date, provided the prescribed annual fees are paid. The first annual fee is due one year from the date of grant.

P4: Is there a novelty requirement? Is it local or worldwide?

Yes, worldwide.

P5: Are utility innovation granted protection in Malaysia under the current law?

Yes, and the term of protection for utility innovation is 10 years from the date of filing.

P6: Can the specifications or claims be amended?

Yes.

P7: Can annuity payments be made before the granting of the patent?

No.

P8: In what language should specifications and claims of the patent be filed?

In Bahasa Malaysia or English.

P9: What are the conditions that might lead to a compulsory license?

See above question.

P10: Must assignments be recorded within a certain period?

No.

P11: Does the Patent Law provide for licenses or registered users?

Yes.

P12: Does the Patents Office publish the patent applications in the Official Gazette?

Yes.

Summary

Malaysia is a member of the Paris Convention and the Patent Cooperation Treaty (PCT).

The Patents Act 1983 (“the Act”) and the Patents Regulations 1986 govern patent protection in Malaysia.

Types of protection for new inventions in Malaysia

Patent: The invention must be novel, have an inventive step and industrially applicable. Duration of protection is for 20 years from date of filing of application.

Utility Innovation: Same as patent except inventive step is not required.

Novelty

Patent law in Malaysia has a worldwide novelty standard, qualified by a 12-month grace period in respect of any public disclosures of the invention that originate from the applicant before the filing date of the Malaysian patent application.

Non-Patentable Invention

1. Discoveries, scientific theories and mathematical methods.

2. Plant or animal varieties or essentially biological process for the production of plants or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro- organism processes.

3. Schemes, rules or methods for doing business, performing purely mental acts or playing games, and

4. Methods for the treatment of human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body.

5. Claims to computer programs.

Priority Claim

The priority claim can be filed within twelve (12) months from the filing date of earlier application in any other country.

Copy Rights

Filling Requirements

1. Full name, address and nationality of the applicant/owner (if company, give country of incorporation);

2. Full Name, address, nationality and passport No. of the author of original works (if different from the applicant).

3. A complete description of the original / derivative works including details of the works which include;

a) Title of the works;

b) Type of works (i.e literary, musical, artistic, film or sound recording);

c) How does the applicant’s work qualify as original works or derivative work in its own right (kindly explain the purpose and description of the works created);

d) (if derivative) description of whether the said derivative works are translations, adaptations, arrangement, or other transformations from the original work and/or are collection of works, compilation of mere data and/or arrangements of contents;

e) First date of conception of original / derivative works (commencement date and completion date). If the work was done in stages, please provide the period and level of work done at each stage;

f) Whether the original / derivative works have been published or otherwise.

4. Clear and accurate disclosure of the original / derivative works. This will be accompanied by the application form for purposes of obtaining the copyright notification status.

5. A statutory declaration duly drafted for filing in support of the application tracing the facts relating to the conception of the original / derivative works, duly signed by the applicant (notarization before the Notary Public is required).

Recordal of Change of Name/Address

1. Particulars of the copyright voluntary notification, i.e type of work, title of the work, application/notification number, full name, address, telephone number and email of the Applicant.

2. Updated information on the new name and/or address of the Applicant.

3. For a company, please provide the supporting documents/certificate on the change of name and/or address issued by the relevant authority on company registration in the applicant’s country.

4. The relevant application form(s) and shall be signed by the applicant (original is required).

Recordal of Assignment

1. Particulars of the copyright voluntary notification, i.e type of work, title of the work, application number, notification number.

2. Full name, address, telephone number and email of the assignor and assignee.

3. Simply signed Deed of Assignment (DOA) and the company stamp (if any) by the assignor and assignee. (Important note: the authorized signatory who will sign the DOA on behalf of the assignor and assignee cannot be of the same person).

4. The relevant application form(s) and shall be signed by both assignor and assignee (original is required).

Recording of License Agreement

1. Particulars of the copyright voluntary notification, i.e type of work, title of the work, application number, notification number.

2. Full name, address, telephone number and email of the licensor and licensee.

3. Copy of license agreement.

4. The relevant application form(s) and shall be signed by both licensor and licensee (original is required).

FAQ

C1. Is copyright protected in Malaysia?

Yes.

C2. Is registration of copyright a must to obtain protection?

No, it gives an automatic exclusive right to the owner of a copyright for a specific period over the copyrighted works. However, it is advisable for the copyright owner to claim ownership by filing Copyright Voluntary Notification (VN) which can be used as a prima facie evidence in proving his creative works as the owner of his copyrighted works.

C3. What category of works copyright law in Malaysia protects?

(h) Literary works;

(i) Musical works;

(j) Artistic works;

(k) Films;

(l) Sound recordings;

(m) Broadcasts; and

(n) Derivative works.

C4. What is the length of protection of a copyright in Malaysia?

Generally, copyright shall subsist during the life of the author and shall continue to subsist until the expiry of a period of 50 years after his death. However, the copyright shall subsist 50 years from the beginning of the calendar year following the year that the work was first published, made or fixed:-

(a) Literary, musical or artistic works where the author is not known;

(b) Published editions;

(d) Broadcasts;

(e) Films;

(f) Performers’ rights.

C5. Must license and/or assignment agreements be recorded?

If the work has been recorded in the register for Copyright Voluntary Notification, it is always advisable to update the records at the Registry on any assignment and/or license by filing Notification of Assignment and/or License.

Summary

Malaysia is a signatory of the Berne Convention and therefore, copyrighted works created in Malaysia would be recognized by each contracting member country of the Berne Convention.

The Copyright Act 1987 (“the Act”) provides comprehensive protection for copyrightable works. The Act outlines the nature of works eligible for copyright, the scope of protection, and the manner in which the protection is accorded. Copyright in Malaysia gives an automatic exclusive right to the owner of a copyright for a specific period over the copyrighted works. The latest amendments of the Act allows the copyright owner to claim ownership by filing Copyright Voluntary Notification (VN) which can be used as a prima facie evidence in proving his creative works as the owner of his copyrighted works.

Works that are entitled for copyright are:-

(a) Literary works;

(b) Musical works;

(d) Films;

(e) Sound recordings;

(f) Broadcasts; and

(g) Derivative works.

Copyright protection for literary, musical or artistic works shall subsist during the life of the author and shall continue to subsist until the expiry of a period of 50 years after his death. In sound recordings, broadcasts and films, copyright protection is for 50 years after the works are first published, made or fixed. The Act also provides protection for the performer's rights in a live performance which shall continue to subsist for fifty years from the beginning of the calendar year following the year in which the live performance was given.

Designs

Requirements

1. A duly executed Appointment of Industrial Design Agent (simply signed and original is required) – ID Form 10.

2. Name, address and nationality of the applicant (if company, give country of incorporation).

3. Name and address of each of the inventor/author.

4. Statement of novelty.

5. Statement justifying the applicant’s right to the industrial design registration, i.e. by virtue of employment contract.

6. Clear representation of the design either drawing or photographs in JPEG Format (i.e. front, back, top, bottom, side and/or perspective).

7. If priority is claimed, please provide the country, application number, and filing date of the basic application.

8. Multiple applications are allowed for designs that relate to the same class of design or to the same set or composition of article.

Renewal/extension

1. Particulars of the industrial design, i.e application/registration number, full name and address of the owner, extension due date and which period of extension (i.e. 2nd, 3rd, 4th or 5th period).

2. The relevant application form(s).

Recordal of Change of Name/Address

1. Particulars of the industrial design, i.e application/registration number, full name and address of the applicant.

2. Updated information on the new name and/or address of the applicant.

3. For a company, please provide the supporting documents/certificate on the change of name and/or address issued by the relevant authority on company registration in the applicant’s country.

4. The relevant application form(s).

Recordal of Assignment

1. Particulars of the industrial design, i.e application/registration number, full name and address of the applicant.

2. Full name and address of the assignor and assignee.

4. The relevant application form(s).

Recording of License Agreement

1. Particulars of the industrial design, i.e application/registration number, full name and address of the applicant.

2. Full name and address of the licensor and licensee.

3. Copy of license agreement.

4. The relevant application form(s).

FAQ

D1: What are the novelty requirements for an industrial design application to be valid?

Industrial design in Malaysia has a worldwide novelty requirement. The novelty grace period in Malaysia constitutes six (6) months before the filing date. If the application became available at the official or officially recognized exhibition or the disclosure was made in bad faith by any third party, it does not destroy the novelty of the industrial design in Malaysia.

D2: Should the industrial design application be filed under the form of drawings and/or photographs, the size thereof and the number of views?

Industrial design can be filed in the form of drawing and/or photographs. The soft copy of representation in JPEG format shall have a size of not more than 100KB and 120×90 pixels. The number of view is unlimited but each view that the Applicant would like to publish is subject to certain official fees.

D3: Can convention priority be claimed in Malaysia? (Paris Convention)

Yes, within six (6) months from the filing date of earlier application.

D4: Is it required to pay annual fees to maintain the registration?

No.

D5: Is it possible to file a multiple industrial design application?

Yes, multiple applications are allowed for designs that relate to the same class of design or to the same set or composition of article.

D7: What is the time frame for the industrial design application to be registered in normal cases?

Approximately 12 to 18 months.

D8: What is the term of protection of an industrial design in Malaysia? Can this term be extended?

The term of protection of a registered industrial design is 25 years from the filing date or priority date. The initial period of registration is for five (5) years and is extendable for four (4) further consecutive terms of five (5) years each.

Summary

Industrial design protection in Malaysia is governed by the Industrial Designs Act 1996 (“the Act”) and Industrial Designs Regulations 1999. The Act provides the rights of registered industrial designs as that of a personal property capable of assignment and transmission by operation of the law.

To be eligible for registration, industrial designs must be new and do not include a method of construction or design that is dictated solely by function. In addition, the design of the article must not be dependent upon the appearance of another article of which it forms an integral part.

Industrial designs that are registrable

Industrial Designs cover features of shape, configuration, pattern or ornamentation applied to an article by any industrial process to make it appeal to the eye, but does not include:

1. a method or principle of construction; or

2. features of shape or construction of an article which:

(a) are dictated by the function which the article has to perform (i.e., functional); or

(b) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.

Novelty Requirement

Industrial design in Malaysia has a worldwide novelty requirement, which:

1. Was not disclosed to the public anywhere in Malaysia or in other countries; or

2. Was not the subject matter of another application for registration of an industrial design filed in Malaysia, but having an earlier priority date made by a different applicant in so far as that subject matter was included in a registration granted on the basis of that other application.

Exception:

The novelty grace period in Malaysia constitutes six (6) months before the filing date. If the application became available at the official or officially recognized exhibition or the disclosure was made in bad faith by any third party, it does not destroy the novelty of the industrial design in Malaysia.

Priority Claim

The priority claim can be filed within six (6) months from the filing date of earlier application in any other country that is a member of the Paris Convention or a member of the World Trade Organization.

Term of Protection

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