CHAPTER 6: PROTECTING INTELLECTUAL PROPERTY

6.1 Intellectual Property

Intellectual property means the property in intellectual creations, particularly technology inventions
and literary and artistic works. Inventions and works protected under the copyright protection can be
used only with the consent of the inventor, author or other owner of the rights. Intellectual rights exist
are also embodied in the protected trademarks.

6.1.1 Copyright

Copyright is the exclusive right given to the owner of a copyright for a specific period. Copyright
protection in Malaysia is governed by the Copyright Act 1987. There is no system of registration for
copyright in Malaysia.
A work that is eligible is protected automatically upon fulfillment of the following conditions:
• sufficient effort has been expected to make the work original in character;
• the work has been written down, recorded or reduced to a material form;
• the author is qualified person or the work is made in Malaysia or the work is first published in
Malaysia

What Does Copyright Protect?

Works eligible for protection are:
• literary works;
• musical works;
• artistic works;
• films;
• sound recordings;
• broadcasts; and
• derivative works

These works shall be protected irrespective of their quality and purpose for which they were created.
However, the copyright protection shall only extend to expression and not ideas, procedures,
methods of operation or mathematical concepts as such.

Who Owns Copyright?

Copyrights in a work vests initially in the author (writer, composer, maker of the work, etc).
However, where the making of a work is made by an employee in the course of his employment,
unless there is any contrary agreement, the copyright in the work shall be deemed to vest in the
person who commissioned the work or the employer.
The author's right is transferable by assignment, testamentary disposition or by operation of law, in
which case the assignee shall be the owner.

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How Long Does Copyright Last?

Literary, Musical or Artistic Works

Generally, copyright in any literary, musical or artistic work shall subsist during the life of the author
plus 50 years after his death.
However, if a work has not been published during the lifetime of the author, copyright in the work
continues to subsist until the expiration of 50 years, following the year in which the work was first
published.
In the case of a work with joint authorship, the life of the author who dies last is used for the purpose
of calculating the copyright duration of the work.

Sound Recordings
The copyright in sound recordings shall subsist until the expiry of a period of 50 years computed from
the beginning of the calendar year next following the year in which the recording was first published
or, if the sound recording has not been published, from the beginning of the calendar year following
the year of fixation.

Broadcasts
For the copyright in broadcasts, the duration shall continue to subsist until the expiry of a period of
fifty years computed from the beginning of the calendar year next following the year in which the
broadcasts was first made.

Films
The duration of the copyright in films shall continue to subsist for a period of fifty years computed
from the beginning of the calendar year next following the year in which the film was first published
or first made available to the public or made, whichever is the last.

Government Works
Copyright in works of Government, government organizations and international bodies shall continue
to subsist until the expiry of a period of fifty years computed from the beginning of the calendar year
next following the year in which the work was first published.

What Are The Legal Rights Of Copyright Owners?

Generally, owners of copyright works in literary, musical or artistic works, films and sound recordings
have the exclusive rights to control:
• the reproduction of the works in any form (including photocopying, recording etc);
• the performing, showing or playing to the public;
• the communication to the public;
• the distribution of copies to the public by sale or other transfer of ownership; and
• the commercial rental to the public.

These exclusive rights apply irrespective of whether the works are copied partly or wholly. Thus,
infringement of copyright occurs if the person claiming can show that the defendant has done such
an act. In other words, the burden of proof lies on the person claiming that his/her work has been
infringed.

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 What Constitutes Copyright Infringement?
The copyright in a work infringed when a person who, not being owner of the copyright, and without
license from the owner, does or authorizes any of the following acts:
• 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, otherwise than for his 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 possession any contrivance used or intended to be used for the purpose
of making infringing copies; or
• causes the work to be performed in public

What Is Copyright Tribunal?

The Malaysian Copyright Act provides for a Copyright Tribunal whose function is to grant licenses to
produce and publish in the National Language a translation of a literary work written in any other
language and arbitration of disputes relating to use of copyright works.

6.1.2 Patent and Utility Innovation

Patent

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.

Utility Innovation

A utility innovation is an exclusive right granted for a "minor" invention which does not require
satisfying the test of inventiveness as required of a patent.

Who May Apply?

Any person may make an application for a patent or for a utility innovation either alone or jointly with
another. The word "person" is not limited to natural persons and thus also includes, for example, a
company.

How Can A Patent or Utility Innovation Be Protected?

An applicant must file a patent or utility innovation application with the Intellectual Property
Corporation of Malaysia which will assess whether it meets the requirements of Patents Act 1983.

Why Protect An Invention?

A patent or utility innovation protection gives the owner of the patent/utility innovation the exclusive
right to stop others from manufacturing, using and/or selling the owner's invention in Malaysia without
the owner's consent or permission.

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Term of Protection
A patent is protected 20 years from the date of filing and a utility innovation is protected 10 + 5 + 5
years from the date of filing subject to use.

Where to Apply?
An applicant must file a patent or utility innovation application with the Intellectual Property
Corporation of Malaysia (IPCM), in Kuala Lumpur or at one of the branch offices located in Sabah
and Sarawak.
Applicants, correspondence and inquiries should be directed to:
The Registrar,
The Patent Registration Office,
Intellectual Property Corporation of Malaysia,
32nd Floor, Menara Dayabumi,
Jalan Sultan Hishamuddin,
50623 Kuala Lumpur.
National Security (Section 23a and 62a)
For reasons of national interest and security, any Malaysian resident wishing to apply for a patent or
certificate protection outside Malaysia must first seek written authority from the Registrar.
However, written authority is not required if a corresponding Malaysian patent/certificate has been
applied for, and a period of at least 2 months has elapsed since filing.
Section 62A: Contravention of Section 23A is an offence and is liable on conviction to a fine not
exceeding fifteen thousand ringgit or to imprisonment for a term not exceeding two years or to both.

Non-Patentable Inventions
Non-patentable includes:
• 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.

Patentable Inventions

For a patent to be granted, an invention must:

• Be new, which means that the invention has not been publicly disclosed in any form, anywhere
in the world;
• Involves 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
• Be industrially applicable, meaning it can be mass produced.

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6.1.3 Trademark

A Trademarks is a mark which distinguishes the goods and services of one trader from those of
another. A mark includes words, logos, pictures, names, letters, numbers or a combination of these.
A Trade Marks is used as a marketing tool to enable customers in recognizing the product of a
particular trader.

Functions of Trademarks
The function of trademarks includes:

• Origin Function
A trademarks helps to identify the source and those responsible for the products and services
sold in the market.

• Choice Function
A trademarks enables consumers to choose goods and services with ease while shopping.

• Quality Function
Consumers choose a particular trade marks 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 trade mark is a valuable asset. Trade marks may be licensed or franchised.

Law Governing Trademarks

As at to date, there are two laws governing trademarks which include:
• Trade Marks Act 1976
• Trade Marks Regulation 1997 (Amendment 2001).

Importance of Trademarks Registration

Exclusive Rights
Registered trademarks owners have exclusive right to use their marks in trading. They also have the
rights to take legal action for infringement under the Trade Marks 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 1972.

Legal Evidence
Registration certificate issued by Registrar Office is a prima facie evidence of trade mark ownership.
A certificate of registration serves as an important document to establish the ownership of goods
exported to other countries.

Are Marks Registration Compulsory?

In Malaysia, registration of trademarks is not compulsory unlike registration of companies and
business. Unregistered trademarks may still obtain protection under Common Law by virtue of use
and reputation. "Passing off" action against an infringer can still be instituted.
However protection through usage is rather difficult and tedious. The trademarks owner must
convince the court, firstly, the infringing act misleads the public, and secondly, the infringing goods
and services may be mistaken from this own goods and services.

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Are All Trade Marks Registrable?
For registration, trade marks for goods or services must be distinctive and may take the following
form:
• An invented word/words,
• Names of person/firm/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 logos, pictures, symbol etc.
• Not deceptive/confusing, or contrary to law and scandalous/offensive.
• Not identical or similar to earlier registered/application trademarks.
• Not identical or similar to well-known trade mark.

A trade mark is also not registrable if it contains words or representations prohibited under Section
15 Trade Marks Act and Regulations 13, 14 and 15 of Trade Mark Regulation 1997, such as:
• 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 Malaysia Police.
• Red Crescent, Geneva Cross in red and Swiss Federal Cross in white or silver on red ground.
• Words or representation or ASEAN and National Flower.

Does Malaysian Registration Give Protection Abroad?

No. If protection of trade mark is required in other countries, it will be necessary to apply for
registration separately in each country. However, a Malaysian application can be used as a basis
for claiming priority in countries which are party to the Paris Convention and WHO.

Registration Process
Every application will be examined to ensure the registrability of the trade marks. If there is an
objection to the trade marks, applicants may submit submission in writing or apply for a hearing.
Trade marks accepted for registration will be advertised in the Government Gazette to allow any
party to forward their opposition on the registration of the trade mark. If there is no opposition, the
mark will be registered and a Registration Certificate will be issued.

Duration of Registration
Trademarks registration is valid for ten years from the date of application and may be renewed every
ten years.

When Registration Can Be Made?

Application for trademarks registration may be made before actual use.

Application Fee
Upon application a fee of RM 250.00 is charged followed by RM 450.00 for advertisement and
issuance of certificate. A list of payable trade mark fees is made available in the Trade Marks
Regulation 1997.

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6.1.4 Industrial Design

An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of
three-dimensional features such as the shape and configuration of an article, or two-dimensional
features, such as pattern and ornamentation. The design features must be applied to an article by
any industrial process or means of which the features in the finished article appeal to eye.

When Should One File For Registration?

As claims are based on a "first-to-file" rule basis, filing of an industrial design should be made at the
earliest possible time or before an article is disclosed to the public. Prior disclosure will destroy the
novelty of the design. So extreme care should be exercised to ensure secrecy of the design.

What Rights Does A Registered Design Confer?

A registered industrial design confers the owner of a registered design the exclusive right to make,
import or sell or hire out any article to which the design has been applied. Other users should obtain
the consent of the rightful owner before using the design. The owner of a registered design has the
right to take legal action against an infringer within 5 years from the act of infringement.

How Long Is The Period Of Protection?

A registered industrial design is given an initial protection period of 5 years from the date of filing and
is renewable for a further two consecutive terms of 5 years each.

How Extensive Is Industrial Design Protection?

An industrial design registered in Malaysia is only protected in Malaysia. In order to have your
designs protected in other countries, applications for registration will have to be filed within six month
from the earliest date when it was first filed in any of the Paris Convention member countries.

How Soon Can One Manufacture And Sell Articles Made To Design?
Any time after the application has been filed. Applicants wishing to exploit the design in foreign
markets may well wish to obtain corresponding protection abroad.

Are Registered Designs Made Public?

Registered designs are open to public inspection and the details of the registration and the details of
the registration are recorded in the Register of Industrial Designs and published in the Government
Gazette.

What Is A Registrable Industrial Design?

To be registrable an industrial design must be new at the date an application for its registration is
filed. A design is considered be new only if it has not been made available or disclosed to the public
in any way whatsoever in Malaysia before the filing date of the application and it is not on the record
the Register of Designs.

What Sort Of Designs Is Excluded From Registration?

The designs of certain types of article are specifically excluded from design registration. An industrial
design is not registrable if:
• the aesthetic appearance of an articles is not significant or the design features differs only in
immaterial details;
• it is a method or principle of construction;
• the designs are contrary to public order or morality;
• the designs of the articles concern exclusively with how an article functions; and

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 • the designs of articles that are integral parts of other articles and whose features are
dependent upon the appearance of other article.

Who Can Apply For Design Registration?

Only the owner of a design may apply to register the design, though an agent can be authorized to
make application. Where an applicant's ordinary residence or principal place of business is outside
Malaysia, the applicant shall appoint an agent registered in the Register of Industrial Designs Agent.

How to File an Application for the Registration of an Industrial Design?

Filing an application to register a design requires:
• A completed application form (ID Form 1) in Malay or English;
• Six set of representations of the article to which the design is applied (drawings or
photograph);
• A statement of novelty in respect of the industrial designs to which the design is applied.
(However a statement of novelty is not required when registering wallpaper, lace or textile
articles); and
• Payment, in full, of the appropriate filing fee.

Where To Lodge Your Application?

All application for the registration of industrial design must be lodge at the Industrial Designs Registry,
Intellectual Property Corporation of Malaysia.

6.1.5 Trade Secret

There are certain business activities and processes that are not patented, copyrighted, or
trademarked. Many businesses trade these as trade secret. It could be special ways of working,
price costings, or price strategies. The most famous example is the recipe for Coca-Cola, which is
not patented. This is because Coca-Cola did not want to reveal the recipe to their competitors.
Unfortunately, the law covering intellectual property is less clear about the term trade secret. Indeed,
there is no satisfactory legal definition of the term (Trott, 2005).

A company can protect its confidential information through non-compete non-disclosure contracts
with its employees (within the constraints of employment law, including only restraint that is
reasonable in geographic and time scope.

The law of protection of confidential information effectively allows a perpetual monopoly in secret
information - it does not expire as would a patent. The lack of formal protection, however, means that
a third party is not prevented from independently duplicating and using the secret information once
it is discovered. The sanctioned protection of such type of information from public disclosure is
viewed as an important legal aspect by which a society protects its overall economic vitality.

A company typically invests time and energy (work) into generating information regarding
refinements of process and operation. If competitors had access to the same knowledge, the first
company's ability to survive or maintain its market dominance would be impaired. Where trade
secrets are recognized, the creator of property regarded as a "trade secret" is entitled to regard such
"special knowledge" as intellectual property.

The precise language by which a trade secret is defined varies by jurisdiction (as do the particular
types of information that are subject to trade secret protection). However, there are three factors that
(though subject to differing interpretations) are common to all such definitions: a trade secret is some
sort of information that:

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 • is not generally known to the relevant portion of the public;
• confers some sort of economic benefit on its holder (where this benefit must derive specifically
from its not being generally known, not just from the value of the information itself);
• is the subject of reasonable efforts to maintain its secrecy

Trade secrets are not protected by law in the same manner as trademarks or patents. Probably one
of the most significant differences is that a trade secret is protected without disclosure of the secret.

6.1.6 Geographical Indication

What Is Geographical Indications?

"Geographical indications" is an indication which identifies any goods as originating in a country or

territory, or a region or locality in that country or territory, where a given quality, reputation or other
characteristic of the goods is essentially attributable to their geographical origin. Geographical
indications can be used on natural or agricultural product or any product of handicraft or industry.

Protection of Geographical Indications

Protection of geographical indications shall be given regardless whether or not the geographical
indication is registered; and as against another geographical indication which, although literally true
as to the country, territory, region or locality in which the goods originate, falsely represents to the
public that the goods originate in another country, territory, region or locality.

Exclusion from Protection of Geographical Indications

The following shall not be protected as geographical indications:
• Geographical indications which are contrary to public order or morality or territory of origin; or
• Geographical indications which are not or have ceased to be protected in their country.
• Geographical indications which have fallen into disuse in their country or territory of origin.
• Institution of proceedings for injunction and damages under

Registration of Geographical Indication

When the application for registration of a geographical indication complies with the requirements and
is not contrary to public order or morality and no opposition has been filed or no appeal to high court
has been filed against the Registrar's decision, than the Register shall register the geographical
indication and issue to the applicant a certificate of registration.

A certificate of registration issued shall be prima facie evidence of the facts stated in the certificate
and of the validity of the registration.

Right of Use
In the case of registered geographical indications, only producers carrying on their activity in the
geographical area specified in the Register shall have the right to use a registered geographical
indication in the course of trade.

The right of use be in respect of the products specified in the Register in accordance to the
qualification, reputation or characteristic specified in the Register.

Cancellation and Rectification of Registration

The Register may, on the request of any interested person and upon payment of the prescribed fee:
• cancel the registration of a geographical indication on the ground that the geographical
indication does not qualify for protection; or

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 • rectify the registration of a geographical indication on the ground that the geographical area
specified in the registration does not correspond to the geographical 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.
Any person aggrieved by the above decision of the Register may appeal to the court.

How Long Is The Period Of Protection?

A registered geographical indication is given ten years of protection from the date of filling and is
renewable for every ten years.

Who May Apply For Registration?

The following persons shall be entitled to file an application for registration of a geographical
indication:
• 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, and includes with respect
to the such person.
• a competent authority; or
• a trade organization or association.

How to File Application for the Registration of a Geographical Indication?

An application for the registration of a geographical indication shall be application and made on Form
G1 accompanied by a copy of statutory declaration by the prescribed fee. Application shall be in the
national language or the English language. Names of natural persons shall be specified in full and
the names of legal entities shall be indicated by their full official designation. Addresses shall be
indicated in a customer’s requirements for prompt postal delivery. The nationality of an applicant
shall be indicated by the name of the country of which he is a national and legal entities shall be
indicate the name of the country in which the entities are constituted and their registered office.
Applicant of a geographical indication who does not reside or carry on business in Malaysia shall
appoint an agent and file Form GI 2, giving an address for service in Malaysia. For the purpose of
the registration of geographical indications, goods are classified in the manner prescribed in the
Geographical Indications Regulations 2001.

Application Fee
Upon application a fee of RM 250.00 is charged, followed by RM 450.00 for advertisement and
issuance of certificate. A list of geographical indications fees applicable is available in the
Geographical Indications Regulations 2001.

Conclusion

This chapter has explored the area of intellectual property and the different form of protection
available to a firm in Malaysia. It has also discussed the dynamic area of the law and illustrate why
firms need to be aware of the increasingly important aspect of innovation.

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