5.Protection of Intellectual Property Rights

Overview

The Malaysian intellectual property regime affords protection via an extensive statutory

scheme covering intellectual property rights including copyright, trade marks, designs,

patents and layout designs of integrated circuits in compliance with Malaysia’s obligation

as a signatory to the Agreement on Trade Related Aspects of Intellectual Property (TRIPS).

Malaysia has acceded to the World Intellectual Property Organisation, the Paris Convention

for the Protection of Industrial Property, the Berne Convention for the Protection of Literary

and Artistic works, as well as the Patent Cooperation Treaty.

The Intellectual Property Corporation of Malaysia (MyIPO) is a statutory body established to,

among others, generally assist in the administration and enforcement of intellectual property

laws and issues or matters relating to intellectual property.

Copyright

The Copyright Act 1987 and its regulations govern the law on copyright in Malaysia. Malaysia

acceded to the Berne Convention on 1 October 1990.

The types of works protected by copyright in Malaysia are literary, musical and artistic works,

films, sound recordings and broadcasts. Derivative works are also protected. The owner of

the copyright in a literary, musical or artistic work, a film, a sound recording or a derivative

work has the exclusive right to control certain acts in these works, including reproduction,

and communication, performance or distribution to the public, either in its original or

derivative form.

Copyright protection in literary, musical or artistic works is for the duration of the life of the

author plus 50 years after death. There is no requirement for registration. Civil remedies are

available to a copyright owner whose copyright is infringed. Malaysia also imposes criminal

penalties for violations of its copyright laws.

Patents

Patent law in Malaysia is governed by the Patents Act 1983 and the Patent Regulations

1986. The owner of a patent has the exclusive rights, in relation to the patent, to exploit the

patented invention, assign or transmit the patent, or to conclude licensee contracts. Anyone

seeking to deal with the patent where the rights are exclusive to the owner will need to get

prior consent from the latter.

The accession by Malaysia to the Patent Cooperation Treaty (PCT) means that Malaysia is a

designated country in respect of a patent application filed in another contracting state on

or after 16 August 2006. Malaysia will also be automatically designated for a request for

international preliminary examination as regards an application filed in another contracting

state. Malaysian applicants themselves will be able to elect for PCT applications where the

same treatment will be according to them as with applicants from contracting states.

Trade marks

Trade marks are accorded protection under the law both under common law and by

registration pursuant to the Trade Marks Act 1976 and Trade Marks Regulations 1997. Trade

marks which are either pending registration, or for which no application for registration have

been made, are protected under the common law provided the owner of such unregistered

marks can show proof of goodwill and reputation in the use of the said marks in relation to

goods or services.

The registration of a trade mark will be for a period of 10 years but may be renewed from

time to time in perpetuity. Upon registration of a trade mark, the proprietor has the exclusive

right to use the trade mark in relation to those goods or services subject to any conditions,

amendments, modifications or limitations entered in the Register of Trade Marks.

The Register of Trade Marks is kept at the Central Trade Marks Office. Inspection of the

Register can be made at the Trade Mark Office during office hours upon payment of a

prescribed fee.

Industrial Designs

The Industrial Designs Act 1996 and Industrial Designs Regulations 1999 apply to applications

for the registration of industrial designs made after 1 September 1999.

The owner on a registered industrial design will have the exclusive right to make or import

for sale or hire or for use for the purposes of any trade or business, or to sell, hire or to

offer or expose for sale or hire any article to which the registered industrial design has been

applied. Once registered, the rights associated with an industrial design will be that of a

personal property in that it will be capable of assignment and transmission by operation of

law. Registered designs are protected for an initial period of 5 years which may be extended

to a further two 5 years terms, resulting in a total period of 15 years.

Layout-designs of Integrated Circuits

The Layout-Designs of Integrated Circuits Act 2000 provides for the protection of layout

designs of integrated circuits based on originality, the creator’s own invention and the fact

that the creation is freely created.

No registration is needed. The Layout-Designs of Integrated Circuits Act grants automatically

to the owner of an original circuit layout certain rights to copy the layout, make an integrated

circuit in accordance with the layout and exploit the layout commercially. The rights can

be transferred either partly or wholly by way of assignment, license, wills or through the

enforcement of law.

The duration of protection is 10 years from the date of commercial exploitation or 15 years

from the date of creation if not commercially exploited.