What is Intellectual Property?
Countries with innovative local industries almost invariably have laws to foster innovation by regulating the copying of inventions, identifying symbols, and creative expressions. These laws encompass four separate and distinct types of intangible property – namely, patents, trademarks, copyrights, and trade secrets, which collectively are referred to as “intellectual property.”
Patents
- Legislation
The Patent Act of 1983 and the Patent Regulations of 1986 govern patent protection in Malaysia. The purpose of the Act is to give legal protection to patent holders together with exclusive rights that include the exploitation of the patents, the assignment or transfer of rights, and license contract signature. - Revisions
The Act was revised in 1995 to speed up the processing and granting of patents in accordance with the Paris Convention and to extend the protection of patent rights. The Act was again revised in 2000 to extend coverage from 15 to 20 years; to incorporate Malaysia’s accession to the multilateral TRIPS Agreement; to allow for parallel imports; and to limit the Government’s power to exploit patents only during emergencies. The Act was revised most recently in 2003 to amend Section 35 on patent applications and to repeal Section 13. - Coverage
What does a patent protect?
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. Patentable inventions must possess the following characteristics:- They must be new, meaning that the invention has not been publicly disclosed in any form, anywhere in the world;
- They must involve an inventive step, that is to say the invention must not be obvious to someone with knowledge and experience in the technological field of the invention;
- They must be industrially applicable, meaning it can be made or used in any kind of industry.Non-patentable inventions include:
- Discoveries, scientific theories, and mathematical methods;
- Plant or animal varieties or essentially biological processes 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;
- Schemes, rules or methods for doing business, performing purely mental acts or playing games;
- Methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body.
Inventors may apply for a utility innovation, which is an exclusive right granted for a “minor” invention that is not required to satisfy the same test as the patented invention.
The term of a patent is 20 years from the date of the filing of the application. The term for a utility innovation is 10 years from the date of filing, with the possibility of renewal for 5+5 years upon proof of use.
- Registration
The Patent and Utility Innovation Administration and Examination Manual also provides useful information for the application process of a patent or utility innovation. Further questions about the registration process may be referred to the Malaysian Intellectual Property Corporation, MyIPO. - Infringement and Enforcement
The Patent Acts provide for patent enforcement by the Enforcement Division of the Ministry of Domestic Trade and Consumer Affairs. Patent owners shall lodge an official complaint supported by the necessary documents to the Ministry’s Enforcement Division if they suspect infringement. The Division will conduct the necessary investigations and prosecutions. [Information above provided by the Malaysian Industrial Development Authority and the Malaysian Intellectual Property Corporation, MyIPO]
Copyright
- Legislation
The Copyright Act of 1987 governs copyright protection in Malaysia. The Copyright 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. - Coverage
What does copyright protect?
The Copyright Act protects the following:- Literary works
- Musical works
- Artistic works
- Films
- Sound recordings
- Broadcasts
- Derivative works
The copyright protection lasts for the author’s lifetime and 50 years after his or her death. If a work has not been published during the lifetime of the author, copyright in the work subsists for 50 years. If the work has joint authorship, the life of the author who dies last is used to compute the copyright expiration.
For sound recordings, copyright protection shall subsist for 50 years since the recording was first published. If the sound recording has not been published, the year of recording (?) is used to compute the duration of the copyright. For the copyright of broadcasts and films, protection also lasts 50 years.
The Copyright Act also provides protection for the performer’s rights in a live performance, which subsists for 50 years from the beginning of the calendar year following the year in which the live performance was given.
What are the rights of copyright holders?
The copyright holder is initially the author of the work; however, if an employee makes the work during the course of his employment, the person who commissioned the work, unless there is any contrary agreement, holds the copyright. The author’s right is also transferable.Copyright holders generally hold the rights to control the following:
- Reproduction of the work in any form (photocopying, recording, etc.);
- Performing, showing, or playing the work to the public;
- Communication to the public;
- Distribution of copies to the public by sale or other transfer of ownership;
- Commercial rental to the public.
These rights apply whether the works are copied partially or wholly. Infringement occurs when a copyright holder can prove the defendant has violated any of these rights. Thus, the burden of proof lies on the person claiming that his or her work has been unlawfully copied.
- Registration
There is no registration of copyright material in Malaysia. A work is automatically protected under the following conditions:- Sufficient effort has been made to make the work original in character;
- The work has been placed in material form (written, recorded, etc.);
- The author is a qualified person, the work is made in Malaysia, or the work is first published in Malaysia.
Infringement and Enforcement
A copyright work is infringed when a person who, not being the owner of the copyright, and without license from the owner, does or authorizes any of the following:- Reproduces in any material form, performs, shows or plays or distributes to the public, communicates by cable or broadcast of the whole work or a substantial part thereof either in its original or derivative form.
- Imports any article into Malaysia for the purpose of trade or financial gains.
- Makes for sale or hire any infringing copy.
- Sells, lets for hire, or by way of trade, exposes or offers for sale or hire any infringing copy.
- Distributes infringing copies.
- Possesses, other than for private and domestic use, any infringing copy.
- By way of trade, exhibits in public any infringing copy.
- Imports into Malaysia, otherwise than for his private and domestic use, an infringing copy.
- Makes or has in his or her possession any contrivance used or intended to be used for the purpose of making infringing copies.
- Causes the work to be performed in public.
The Copyright Act of 1987 provides for copyright enforcement by the Enforcement Division of the Ministry of Domestic Trade and Consumer Affairs, apart from the police. Copyright owners may lodge an official complaint supported by the necessary documents to the Ministry’s Enforcement Division if they suspect infringement. The Division will conduct the necessary investigations and prosecutions.
[Information above provided by the Malaysian Industrial Development Authority and the Malaysian Intellectual Property Corporation, MyIPO]
Trademark
- Legislation
The Trade Marks Act of 1976 and the Trade Marks Regulations of 1997 govern trademark protection in Malaysia. According to the MIDA, the Act provides protection for registered trademarks and service marks in Malaysia. Once registered, no person or enterprise other than its proprietor or authorized users may use them. - Coverage
What does trademark protect?
A trademark is a sign that distinguishes the goods and services of one trader from those of another. A sign includes words, logos, pictures, names, letters, numbers or a combination of these.According to MyIPO, a trademark exhibits the following functions:- Origin Function – A trademark helps to identify the source and those responsible for the products and services sold in the market.
- Choice Function – A trademark enables consumers to choose goods and services with ease while shopping.
- Quality Function – Consumers choose a particular trademark for its known quality.
- Marketing Function – Trademarks play an important role in advertising. Its normal for consumers to make purchases based on continuous influence of advertising.
- Economic Function – Established trademark is a valuable asset. Trademark may be licensed or franchised.
MyIPO lists the following items as eligible for trademark registration:
- Invented word or words
- Names of person, firm, or company mentioned in a specific manner
- Applicant’s signature
- Words with no direct relation to goods or services, geographical name of surname
- Any distinctive sign such as logos, pictures, symbols, etc.
Trademarks may not be deceptive or confusing, contrary to law, scandalous or offensive, identical or similar to earlier registered (or applied) trademarks, identical or similar to a well-known trademark.
Under Section 15 of the Trade Mark Act and Regulations 13, 14, and 15 of the Trade Mark Regulation, trademarks may not be registered if they include the following words:
- Patent, Patented, By Royal Letters Patent, Registered, Registered Design and Copyright;
- His Majesty Yang di-Pertuan Agong, Her Majesty Raja Permaisuri Agong, The Royal Highness Sultans and Their Excellencies Yang di-Pertua Negeri;
- Royal or Imperial Crowns, Arms, Crest, Armorial bearings or insignia;
- The Royal Malaysian Army and Royal Malaysian Police;
- Red Crescent, Geneva Cross in red and Swiss Federal Cross in white or silver on red ground;
- Words or representation of ASEAN and National Flower.
The term of protection is ten years for trademarks, renewable every ten years thereafter.
What are the rights of trademark holders?
Registered trademark owners have exclusive right to use their marks in trading. They also have the rights to take legal action for infringement under the Trade Mark Law against others who use their marks without consent. They can either take civil action or lodge complaints to Enforcement Division for appropriate actions under the Trade Description Act of 1972. - Registration
MyIPO diagrams the trademark application process
According to MyIPO, every application will be examined to ensure whether the proposed trademark is eligible for registration. If there is an objection to the trademark, applicants may submit responses in writing or apply for a hearing. Trademarks accepted for registration will be advertised in the Government Gazette to allow any part to forward their opposition on the registration of the trademark. If there is no opposition, the mark will be registered and a Registration Certificate will be issued. The application fee is RM 250 as well as RM 450 for advertisement and issuance of certificate. (Total approximately: USD $187.00) - Infringement and Enforcement
The Trade Mark Act and Trade Mark Regulation provide for trademark enforcement by the Enforcement Division of the Ministry of Domestic Trade and Consumer Affairs. Trademark owners shall lodge an official complaint supported by the necessary documents to the Ministry’s Enforcement Division if they suspect infringement. The Division will conduct the necessary investigations and prosecutions.
[Information above provided by the Malaysian Industrial Development Authority and the Malaysian Intellectual Property Corporation, MyIPO]
Legal Disclaimer
Inclusion of material in this IPR Toolkit does not constitute legal advice and is not a substitute for advice of legal counsel and is subject to change according to the laws of the Government of Malaysia. The United States Government will strive to update and improve this IPR Toolkit as information becomes available and as United States Government resources allow. Additionally, the U.S. Government, the U.S. Department of State, their employees and contractors assume no legal liability for the accuracy or completeness or usefulness of any information, resource, or process contained disclosed herein. The information outlined above is provided by the Malaysian Industrial Development Authority, the Malaysian Intellectual Property Corporation, and the cited Malaysian Acts.