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Intellectual Property Rights Toolkit
22 MINUTE READ
December 4, 2015

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]

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.