This country-specific Q&A provides an overview to intellectual property law in Malaysia.
It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.
This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/
What different types of intellectual property rights exist in this jurisdiction to protect?
Intellectual property rights exist in our jurisdiction to protect:
(a) Inventions: patents and confidential information
(b) Brands: trade marks, passing off, geographical indication
(c) Other creations, technology and proprietary interests: copyright (which includes literary works; musical works; artistic works such as graphic work, photograph, sculpture or collage, works of architecture and works of artistic craftsmanship; films; sound recordings; broadcasts; published editions of works; derivative works) and industrial design
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Patents: a maximum of 20 years from the filing date of the application. An annual renewal fee must be paid to keep the patent in force.
Confidential information: common law protection. Duration is potentially perpetual.
Trade marks: Ten years and is renewable every ten years.
Geographical indication: Ten years and is renewable every ten years.
Literary, musical or artistic works: life of the author plus 50 years after death. In joint authorship, computation starts from the date of the author who dies last.
Sound recording, films, works of Government, Government organisations and international bodies, typographical arrangement of a published edition and broadcasts continues to subsist until the expiry of 50 years computed from the beginning of the calendar year next following the year in which the sound recording, film government work, broadcasts and edition was first published or made.
Duration for performers is until the expiry of 50 years from when the performances was performed or fixed in a sound recording.
Industrial design: 5 years from filing, extendable for four consecutive 5 year terms
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
The person whose name is recorded in the Register of Patents as the grantee of a patent.
The right to a patent for an invention which is made in the performance of a contract of employment or in the execution of a commissioned work is deemed to accrue to the employer or the person who commissioned the work, with exceptions.
The first user of the trade mark in the course of trade is the owner of a trade mark.
Jointly to the producers carrying on their activity in the geographical area specified in the Register.
The presumption is that copyright will vest initially in the author of the work.
Copyright is deemed to be transferred to the person who commissioned the work or the author’s employer when a work is commissioned by a person under a contract of service or apprenticeship or created in the course of the author’s employment as soon as it comes into existence, without any formalities.
The person registered as the owner in the Register of Industrial Designs.
Where an industrial design is created in pursuance of a commission for money or money’s worth or is created by an employee in the course of his employment, the person commissioning the industrial design or the employer is the original owner of the industrial design, however, this is subject to any agreement to the contrary between the parties.
Which of the intellectual property rights described in questions 1-3 are registered?
Patents, Trade Marks, Geographical Indication and Industrial Design.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Procedure: File application — Preliminary Examination — Acceptance + Application laid open for public examination — Request for substantive or modified substantive examination — Substantive examination — Certificate of grant issued — Gazetted
The proprietor of the trade mark which is used or proposed to be used by him.
Procedure: File application — Amendment in the event of non-compliance — Formality checking to see compliance with statutory requirement (plus amendments if necessary) — Search for prior marks & examination on the registrability — Gazetted for opposition upon acceptance — Certificate of registration issued upon no opposition
A person who is carrying on an activity as a producer in the geographical area specified in the application with respect to the goods specified in the application.
Procedure: File application — Formality examination to see compliance with statutory requirement — Amendment in the event of non-compliance — Advertised for opposition — Registration
Procedure: File application — Formality & examination to see if definition and requirements are fulfilled — Amendment and file submission to amend if requirements not fulfilled — Novelty search — Certificate of registration issued — Gazetted
How long does the registration procedure usually take?
At least 3 years.
12 to 18 months
6 to 9 months
8 to 12 months
Do third parties have the right to take part in or comment on the registration process?
Yes, during the publication stage.
Trade marks and Geographical Indication:
Yes, during the opposition stage.
What (if any) steps can the applicant take if registration is refused?
The Applicant is given 3 months to submit correction submissions where the application form is not complete, otherwise the application is considered invalid. Where there is statutory non-compliance during Preliminary Examination, the Applicant is given 3 months to submit correction submissions, which will then go back for Preliminary Examination, otherwise, the application is refused. Where the Request for Substantive or Modified Substantive Examination is not received, the application will be withdrawn. Where there is statutory non-compliance during Substantive Examination, the Applicant is given 2 months to submit correction submissions/arguments, which will then go back for Substantive Examination, otherwise the application is refused. The Applicant can appeal to the High Court, and subsequently to the Court of Appeal and the Federal Court as a final resort.
Upon issuance of an Objection during Substantive Examination, the Applicant may appeal by way of written submissions. Upon issuance of a Maintained Objection, the Applicant may request for a Hearing with the Trademark Office. If there is a Refusal after the Maintained Objection, the Applicant may appeal to the High Court, and subsequently to the Court of Appeal and the Federal Court.
If there is a Refusal upon Opposition proceedings commenced by a third party, the Applicant may appeal to the High Court, and subsequently to the Court of Appeal and the Federal Court.
Where there is non-compliance with statutory requirements during the Formality Examination, the Applicant may make Amendments, which will then go back for Formality Examinations. Where the Amendments are not accepted, the application is refused with no means for appeal.
In the event the registration is opposed by a third party, and the opposition is Accepted, the application will be Withdrawn. The applicant can then appeal to the High Court, and subsequently to the Court of Appeal and the Federal Court.
Where there is non-compliance with statutory definitions and requirements, the Applicant may make Amendments and Submissions within 3 months, otherwise the Application is considered abandoned Where the Application is deemed to comply, it will proceed to Novelty Search. Where the Application is objected to during the Novelty Search, the Applicant must provide a Feedback within 3 months, otherwise the Application will be refused. Upon abandonment or refusal, the Applicant can appeal to the High Court, and subsequently to the Court of Appeal and the Federal Court.
What are the current application and renewal fees for each of these intellectual property rights?
Application: The Official Fees are approximately RM2050 excluding Goods and Services Tax.
Renewal: In making annuity payments, the Official Fees is from RM290 to RM2,700.
Application: The Official Fees is RM1,065.00 for one trade mark in one class for a straightforward registration.
Renewal: The Official Fee is RM645.
Application: The Official Fee for a straightforward registration is RM700.
Renewal: The Official Fee is RM420.
Application: The Official Fees for filing application is RM800 for one industrial design application in single view in one class in a straightforward application. The total amount is dependent on the number of views filed, each additional view will cost RM200.
Renewal: The Official Fee is RM800.
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
Patents, trade marks and industrial design: the grace period is one year from the expiry date, with an option to restore the registration.
Geographical indications: the grace period is six months from the expiry date, with an option to restore the registration.
What are the requirements to assign ownership of each of the intellectual property rights described in questions 1-3?
Deed of assignment
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
No statutory penalties but no assignment shall have effect against third parties unless so recorded in the Register.
What are the requirements to licence a third party to use each of the intellectual property rights described in questions 1-3?
Must be in writing.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
There is no distinction between the rights of exclusive and non-exclusive licensees to request the patentee to institute infringement proceedings unless there are provisions to the contrary in the licence contract.
Where the patentee refuses or fails to institute infringement proceedings within three months from the receipt of the request, the licensee is able to institute the proceedings in his own name after notifying the patentee of his intention to do so. The patentee has the right to join in the proceedings.
There is no distinction between the rights of an exclusive and non-exclusive registered user. The registered user is entitled to call upon the registered proprietor to take proceedings for infringement of the trade mark, and if the registered proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the registered proprietor and shall make the registered proprietor a defendant (subject to any agreement subsisting between the registered user of a trade mark and the registered proprietor of the trade mark).
Where the registered proprietor fails to exercise the rights that has been conferred to them by their registration to the prejudice of the registered user, the registered user may apply to Court for an order, including ordering the registered user be recorded as the registered proprietor of the trade mark via rectification of the Register.
There is no distinction between the rights of exclusive and non-exclusive licensees in respect of enforcement. Except against the copyright owner, the exclusive licensee shall have the same rights of action and be entitled to the same remedies as those available in a legal action brought by a copyright owner for infringement of copyright as if the licence had been an assignment.
Where an action for infringement of copyright is brought either by the copyright owner or the exclusive licensee, and the action relates to an infringement in respect of which they have concurrent rights of action under that section, he is not entitled, except with the leave of court, to proceed with the action unless the copyright owner or the licensee is joined as a plaintiff in the action or added as a defendant. An exclusive licensee however, may obtain an interlocutory injunction without having to join the copyright owner as a party in the application.
Where an action, in so far as it is brought by the copyright owner for infringement of copyright, relates to an infringement in respect of which the owner of the copyright and the exclusive licensee have concurrent rights of action, and an account of profits is directed to be taken in respect of that infringement, then subject to any agreement of which the court is aware whereby the application of those profits is determined as between the owner of the copyright and the exclusive licensee, the court shall apportion the profits between them as the court may consider just.
Where an exclusive or non-exclusive licensee wants to institute any infringement proceedings, the licensee must prove that they had made a prior request to the registered owner to institute proceedings for the infringement complained of by him and that the registered owner had refused or failed to institute the proceedings within three months from the receipt of the request. The registered owner however still has the right to join the proceedings.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Using a false trade description relating to trademark (Trade Descriptions Act 2011): The general penalty for body corporate is a maximum RM25,000 and for a second or subsequent offence, a maximum RM50,000. The general penalty for non-corporate body is a maximum RM10,000 or to imprisonment for a maximum 1 year, or both. For a second or subsequent offence, a maximum fine of RM20,000 or to imprisonment for a maximum 3 years or both.
Public Prosecutor initiates prosecution at its discretion.
Copyright infringement - fine of between RM10,000 and RM50,000 or to imprisonment for a maximum 5 years or both, where no other special penalty is provided.
Public Prosecutor initiates prosecution at its discretion.
What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in questions 1-3? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
Civil proceedings: Possible reliefs include injunction, damages, search and seizure order, account of profits and statutory damages (patents, trade marks, geographical indication, copyright, industrial design).
What is the length and cost of such procedures?
Civil proceedings may take between 9 – 12 months. The costs of full trial may range from RM80,000 to RM500,000 depending on subject matter and complexity.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
The High Court has jurisdiction. Nature of the dispute will determine if the dispute is to be by way of a Writ or Originating Summons.
Writ: Witness testimony through trial.
Originating Summons: affidavit evidence only.
Time to judgment is approximately 9-12 months.
Reliefs available depend on the subject matter and generally includes damages, injunctions and costs. Appeal is possible to the Court of Appeal and finally to the Federal Court.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so?
While there is a Court in Kuala Lumpur to hear Intellectual Property matters, there may not be any special technical training provided to the Judge. Experts may be appointed by the Court or parties. As Malaysia adopts the adversarial system, it is the burden of both parties to present all the facts they intend to rely on.
The Malaysian Court system provides for discovery applications to be made.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
Writ: Evidence tendered through witnesses and is open to cross examination. It is employed in every case.
Originating Summons: the Court will look at affidavit evidence and rebuttals.
What customs procedures are available to stop the import and/or export of infringing goods?
Trade mark counterfeiting activities can be combated at the borders of the country through the seizure and detainment of counterfeit goods, which involves both the Registrar of Trade Marks and Malaysian Customs authorities, which is conducted upon application by the registered proprietor or his agent to the Registrar. Border measures do not apply to unregistered trade marks.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
There is no mandatory system in relation to non-court enforcement options or dispute resolution mechanisms to be elected for intellectual property disputes.
What options are available to settle intellectual property disputes in your jurisdiction?
Parties may settle intellectual property disputes by going to Court or referring their disputes to arbitration.
What is required to establish infringement of each of the intellectual property rights described in questions 1-3? What evidence is necessary in this context?
Infringement of a patent involves the exploitation of a patented invention by a person other than the owner of the patent and without the agreement of the owner in relation to a product or a process falling within the scope of protection of the patent.
There is a breach of confidence where the following three elements is established by the plaintiff to the satisfaction of the court:
(a) The information which the plaintiff is seeking to protect is of a confidential nature
(b) The information in question was communicated in circumstances importing an obligation of confidence; and
(c) There must be an unauthorised use of that information to the detriment of the party who communicated it.
A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or registered user of the trade mark using by way of permitted use, uses a mark which is identical with it or so nearly resembling it as is likely to deceive or cause confusion in the course of trade in relation to goods or services in respect of which the trade mark is registered in such a manner as to render the use of the mark likely to be taken either:
(a) as being use as a trade mark;
(b) in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular, or other advertisement, issued to the public, as importing a reference to a person having the right either as registered proprietor or as registered user to use the trade mark or to goods with which the person is connected in the course of trade; or
(c) in a case in which the use is use at or near the place where the services are available or performed or in an advertising circular or other advertisement issued to the public, as importing a reference to a person having a right either as registered proprietor or as registered user to use the trade mark or to services with the provision of which the person is connected in the course of trade.
The unlawful use in the course of trade which can give rise to institution of proceedings in court for an injunction to prevent unlawful use of a protectable geographical indication includes:
(a) The use of any means in the designation or presentation of any goods that indicates or suggests, in a manner which mislead the public, that the goods in question originate in a geographical area other than the true place of origin.
(b) Any use of a geographical indication which, although literally true as to the geographical origin of the goods, falsely represents to the public that the goods originate in another country, territory, region or locality or
(c) Any use of a geographical indication identifying wines or sprits not originating in the place indicated by that geographical indication.
Copyright is infringed by a person
(a) who imports an article into Malaysia for the purpose of selling, letting for hire, or by way of trade offering or exposing for sale or hire the article;
(b) distributing the article for the purpose of trade or for any other purpose to an extent that it will affect prejudicially the owner of copyright;
(c) by way of trade, exhibiting the article in public
without the consent or licence of the owner of the copyright where he knows or ought reasonably to know that the making of the article was carried out without the consent or licence of the owner of the copyright.
A person infringes the rights conferred by the registration of an industrial design if he, without licence or consent of the owner of the industrial design,
(a) applies the industrial design or any fraudulent or obvious imitation of it to any article in respect of which the industrial design is registered;
(b) imports into Malaysia for sale, or for use for the purposes of any trade or business any article to which the industrial design or any fraudulent or obvious imitation of it has been applied outside Malaysia without the licence or consent of the owner;
(c) or sells, or offers or keeps for sale, or hires or offers or keeps for hire any of the articles as described above while the registration is still in force.
What defences to infringement are available?
(a) Monopoly rights of a patentee are confined to activities which are carried out for industrial or commercial purposes only.
(b) Patent owners cannot control acts which are carried out in order to make, use, offer to sell or sell a patented invention solely for uses reasonably related to the development and submission of information to the relevant authority which regulates the manufacture, use or sale of drugs.
(c) A patentee or any third party who has his consent, who has placed patented products into circulation for the first time in the marketplace cannot thereafter utilise his exclusive rights as a patentee to control subsequent dealings with the products.
(d) Where the infringing act has been committed with the conditional or unconditional consent of the patent owner or his licensee.
(e) The rights of a patentee do not extend to the use of the patented invention on any foreign vessel, aircraft, spacecraft or land vehicle temporarily in Malaysia.
(f) No infringement proceedings can be taken where the patent has lapsed and has not been reinstated.
(g) Where the act is done pursuant to a compulsory licence.
(h) Where the exploitation is committed by the Government or any person authorised by the Government.
(i) Where a person has used the patented product or process in good faith.
(j) A purchaser of a patented article has an implied licence to repair it as long as the repair does not amount to the making of a new article.
The common defence:
(a) The information is not confidential but is common knowledge
(b) The information claimed to be confidential is not identified
(c) There is just cause or excuse for the disclosure
It is not trade mark infringement where:
(a) a person trades in his own name, name of his or his predecessor’s business and to use the name as a trade mark;
(b) the use in good faith by a person of a description of the character or quality of his goods or services (the description not importing a reference to the trade mark of another trader);
(c) the owner of an unregistered trade mark continuously used his trade mark before the use of the registered trade mark by the plaintiff (or his predecessor in business) or before the registration of the trade mark, whichever is earlier;
(d) the registered proprietor of a trade mark or his registered user has placed his mark on the goods which are then marketed, the registered proprietor loses all rights to control subsequent dealings with the goods;
(e) the registered proprietor or registered user has given implied or express consent to the use of the trade mark;
(f) independent manufacturers of spare parts or accessories in relation to trade marked goods used the trade mark for the purpose of informing the public that the parts and accessories are suitable for the goods. However, the use must not cause any deception or confusion that a connection exists in the course of trade between the registered trade mark owner and the manufacturer;
(g) the registered trade mark are used by concurrent proprietors.
Institution of court proceedings for unlawful use of geographical indications can only be instituted by ‘an interested person’ as defined under the Act, such as individual consumers of goods bearing a false or misleading geographical indication.
It is not copyright infringement where:
(a) Acts restricted by copyright is done by way of fair dealing including for purposes of research, private study, criticism, review or the reporting of news or current events;
(b) Incidental inclusion of a copyright work in an artistic work, sound recording, film or broadcast, including its placement in public view;
(c) Private recording of broadcasts or any of its copyrighted work to be watched later;
(d) If the use of the copyright work is made by way of illustration for teaching purposes and is compatible with fair practice;
(e) Use made of a work by or under the direction or control of the Government, provided certain conditions are satisfied;
(f) Certain uses in relation to computer programs;
(g) The infringing act is done by way of parody, pastiche or caricature;
(h) Reading or recitation in public or in a broadcast by a person of any reasonable extract from a published literary work if accompanied by sufficient acknowledgement is not an infringement;
(i) The making and issuing of copies of any work into a format to cater for the special needs of people who are visually or hearing impaired and the issuing of such copies to the public by non-profit making bodies or institutions;
(j) Reproduction of work by broadcasting service intended exclusively for lawful broadcasting;
(k) Reproduction of articles on current topics or for informatory purposes;
(l) The making of a transient and incidental electronic copy of a work made available on a network where such copy is required for the viewing, listening or utilisation of the work.
The industrial design may be revoked where it was not new at the priority date of the application for registration, and may be cancelled where the registration has been procured by unlawful means.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
There are various types of challenges to intellectual property rights, at different periods in time.
Invalidation proceedings: In an infringement action, the defendant can challenge, in the same action, the validity of the patent. The validity of a patent may also be put in issue in proceedings for a declaration of non-infringement.
In an action for infringement of a trade mark, it is common for the defendant to counterclaim with an application for cancellation, which can be an action on its own or as a counterclaim.
Any interested person as specified under the Act may request the Registrar to cancel or rectify the registration of a geographical indication.
The defendant can argue on the subsistence of copyright.
Application to rectify the Register by including, making, expunging or varying any entry in the Register or correcting any error or defect in the Register as it deems fit must be made by an aggrieved person or interested party.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
The forum for challenging these intellectual property rights is in Court.
The grounds for a finding of invalidity of each of these intellectual property rights are:
(a) The invention did not meet the patentability requirements, it is not an invention within the meaning of the Act or is a non-patentable invention or is against public order or morality or fails to comply with the requirements under the Act
(b) The description or the claim does not comply with the requirements of the Patents Regulations 1986
(c) The drawings which are necessary for the understanding of the claimed invention have not been furnished
(d) The right to the patent does not belong to the person to whom the patent was granted
(e) The information that was provided to the Registrar under s 29(4) was deliberately incomplete or incorrect.
That the information is not confidential.
Registration is without sufficient cause, wrongfully remaining or not used.
Cancellation on the ground that the geographical indication is excluded from protection such as the geographical indication not corresponding to the meaning of ‘geographical indication’ as defined in the Act; the geographical indication is contrary to public order or morality; the geographical indication which are not or have ceased to be protected in their country or territory of origin or the geographical indications which have fallen into disuse in their country or territory of origin.
The rectification of the registration of a geographical indication on the following grounds:
(a) That the geographical area specified in the registration does not correspond to the geographical indication;
(b) That the indication of the products for which the geographical indication is used or the indication of the quality, reputation or other characteristic of such products is missing or unsatisfactory.
That the work is not original or there is no copyright.
Registration without sufficient cause or wrongfully remaining.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described in questions 1-3, for example, declaratory relief or licences of right?
Any interested person can request by instituting proceedings against the owner of the patent that the Court declare that the performance of a specific act does not constitute an infringement of the patent, which when proven, the Court shall grant the declaration of non-infringement.
A compulsory licence allows third parties other than the patentee to exploit the patent in a number of situations. There are three types of compulsory licences:
(a) Compulsory licences which are granted due to the act or inaction of the patent owner that is against public interest;
(b) Compulsory licences which are granted on the basis of inter-dependence of patents and
(c) Compulsory use of the patent by the Government.
Any person may apply to the court for the grant of a compulsory licence in respect of the industrial design on the ground that the industrial design is not applied in Malaysia by any industrial process or means to the article in respect of which it is registered to such an extent as is reasonable in the circumstances of the case. The court may make such order on the application as it considers just.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in questions 1-3?
Special damages, general damages, injunctions, account of profits, costs (partial), exemplary damages, statutory damages (if applicable).
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
There is no fixed costs. The costs would depend on the type and manner of enforcement. Costs are generally awarded to the winning party but this is at the discretion of the Court. Costs awarded is relatively low.
A defendant in any action may apply for security of costs. This would be the discretion of the Court.