INTELLECTUAL PROPERTY

Introduction
Scenario 1:
(a) Michael composes a new song entitled “Love the World”. Within 2 weeks of its release, it had
hit the top ten songs in Malaysia.

(b) Eddy has invented a remote control vacuum cleaner. He believes that it will be a very
popular household equipment.

(c) When Stanley lost his job last year, he decided to sell sandwiches using his grandmother’s
recipe. The sandwich has become a huge success and he intends to call it “Stanley’s
Sandwiches”.

How would Michael, Eddy and Stanley protect their interest?

All of them have ‘created’ or invented something new, which could be profitable businesses.
These new creations or inventions could be occupied or imitated by others. So, how can they
protect their ideas?

These creations or inventions would be classified as intellectual PROPERTY and specific

legislations have been passed to protect the authors or inventors.

GENERAL DEFINITIONS

Intellectual property - is a special type of intangible property arising from the creative
endeavours of the human mind such as literary works and computer software. There are 3 major
forms of intellectual property and they are:-

1. COPYRIGHT - is a property found in literary works, musical works, artistic works, films,
sound recordings and broadcasts.

• Copyright protects the author of such works from being deprived of their rewards by
unauthorized copying of their works.

• Unlike patents and trademarks, copyright is not subject to any system of registration, it
comes into effect immediately when a work is created.

*Therefore, Michael as author of the song can be protected under the Copyright Act 1987.

2. PATENT - is a monopoly or exclusive right to exploit an invention for a stated period of

time. By registering a patent an inventor makes it an offence for other persons, without
his consent, to benefit from his intellectual efforts. Also sometimes referred to as
industrial property.

1
 *So Eddy as the inventor of the vacuum cleaner can protect his invention under the Patents
Act 1983.

3. TRADE MARK means any sign capable of being represented graphically which
is capable of distinguishing goods or services of one undertaking from those of other
undertakings

-------------------------------------------------------------------------------------------------------------

COPYRIGHT
What works are protected under the Copyright Act 1987?

The types of works that are eligible for copyright protection are:
• Original works
• Derivative works
• Published editions of works

(a) ORIGINAL WORKS – Under Section 7 the following original works are eligible for
copyright:

a. Literary Works which is defined in Section 3 to include the following:-

i. Novels, stories, books, pamphlets, manuscripts, poetical works and other writings.

ii. Plays, dramas, stage directions, film scenarios, broadcasting scripts, choreographic
works and pantomimes.

iii. Treatises, histories, biographies and other works of reference.

iv. Letters, reports and memoranda.

v. Lectures, addresses, sermons and other works of the same nature.

vi. Tables or compilations, expressed in works, figures, or symbols (whether or not in

a visible form) and

vii. Computer programs or compilations of computer programs.

Note: Official text of the Government or statutory bodies of a legislative or regulatory
nature, and judicial decisions are not included as literary works.

b. Musical Works – This is defined in Section 3 to mean any musical works and includes
works composed for a musical accompaniment.

c. Artistic Works – which is further defined in Section 3 to mean:

2
 i. A graphic work (such as any painting, drawing, map chart or plan and engraving,
etching, woodcut or similar work), photograph, sculpture or collage, irrespective
of artistic quality.

ii. A work of architecture being a building or a model for a building or

iii. A work of artistic craftsmanship.

d. Films – means any fixation of a sequence of visual images or material of any

description and is capable of being shown as a moving picture or being recorded on
other material. It includes sound track in the film.

e. Sound Recording – means any fixation of a sequence of sounds as capable of being

perceived aurally and of being reproduced by any means but does not exclude sound
track associated with a film.

f. Broadcast – means the transmitting, for reception by the general public, by wireless
means or wire, of sounds or images or both.

Note: Important: No copyright protection unless……

Section 7(3) provides that a literary, musical or artistic work is not eligible for copyright
protection unless sufficient effort has been expended to make the work original in character
and the work has been written down, recorded or otherwise reduced to material form.

What is ‘original?

In University of London Press Ltd. V University Tutorial Press – Petersen J states, ‘It does not
mean original or inventive idea or thought. Copyright is not concerned with the originality of
ideas but with the expressions of thoughts’.

Reduced to ‘material form’ - includes any form of storage from which the work can be
reproduced.
E.g. in Scenario 1(a) – for Michael’s song to be protected, the song must be original and reduced to
a material form i.e. in the form of a tape or disc recording or written down as a musical score, or
recorded in the form of a video.

Scenario 2

i. Vanessa, a trained classical violinist, has decided to rearrange some classical music into pop
music.

ii. Woo, is excited about a book, entitled “Dream of the Red Chamber” and he decides to make a
movie out of it.

iii. Lee has decided to write a book on Management using materials from various books, articles,
and journals.

iv. Sammy has made a compilation of all the judgment of Tan Sri Hassan.

3
*All the work above does not belong to the persons mentioned but were taken from someone
else’s work. These are known as derivative work.

Can these derivative works be protected under the Copyright Act 1987?

(b) DERIVATIVE WORKS – Section 8 states that these works are protected as original works
and such derivative works are:

a. Translations, adaptations, arrangements and other transformation of works eligible

for copyright and

Adaptation includes the following:-

Converting a literary work into drama, a dramatic work into literary form, translation,
conveying a story or action by means of pictures in a book, newspaper, magazine or
periodical, arrangements of musical work, converting literary or artistic work into film.

b. Collection of works eligible for copyright which by reason of the selection and
arrangement of their contents, constitute intellectual creation.

Application to Scenario 2 above

All these works can be produced as derivative works and will still be regarded as original works.

Scenario 3

Eric, a Jamaican, has written a new book on Accounting and it is published in Malaysia by Sakti Sdn.
Bhd. Is there a copyright on the book?

(c) PUBLISHED EDITIONS OF WORKS – Section 9

Copyright subsists in every published edition of any one or more literary, artistic or musical
work where either,

a. The first publication of the edition took place in Malaysia – S9(1)(a), or

b. The publisher of the edition was a qualified person at the date of the first publication
thereof – S9 (1) (b).

Application to Scenario 3
Eric’s book would be regarded as published edition of a literary work and is protected by virtue of
the fact that Sakti Sdn. Bhd. is a local publisher.

Further Requirements
All original, derivative and published editions of work are eligible for protection under the
Copyright Act 1987 provided they meet the further requirements of Section 10.

4
SECTION 10 – QUALIFICATION FOR PROTECTION:

What are the qualifications for copyright protection?

To qualify for copyright protection under section 10, the original, derivative or published editions
of work must fall under any one of the conditions listed below:-

a. Qualification by authorship – Section 10(1) - when the author or joint author is, at the time
when the work is made, a qualified person.

Who is a qualified person?

A qualified person in relation to an individual is a person who is a citizen or a permanent
resident in Malaysia; in relation to a body corporate, mean a body corporate established in
Malaysia.

b. Qualification by Publication – Section 10(2) - when the publication:

i. In relation to literary, musical or artistic or film or sound recording is *first published in

Malaysia, i.e. a copy or copies of the work have been made available to the public with the
consent of the author.

(Note: The performance of a literary or musical work and the exhibition of an artistic work does
not constitute publication of the work.)

ii. In relation to architectural work, when it is erected in Malaysia or being any other
artistic work is incorporated in a building located in Malaysia.

iii. For broadcast, when it is transmitted from Malaysia.

iv. For film, it is published when a copy or copies of the film are sold, let on hiring, or
offered or exposed for sale or hire to the public with the consent of the owner.

v. For a sound recording, when a copy or copies of the sound recording have been made
available to the public with the consent of the owner.

vi. For published editions of works when the first publication of the edition took place in
Malaysia or the publisher was a qualified person at the date of the first publication.

*A Publication is deemed to be first publication in Malaysia if:-

(a) The work was first published in Malaysia and not elsewhere or

(b) The work was first published elsewhere but later published in Malaysia within 30 days of
such publication elsewhere.

5
 Berne Convention
On 1st October 1990, Malaysia agreed to the Berne Convention for the Protection of Literary
and Artistic Work as revised by the Paris Act 1971.

The Berne Convention was established in 1886 and came into force on 5th December 1887.
Its aim is the protection of authors in their literary and artistic work.

Under this Convention, a Malaysian author’s work would be protected, whether

published or not, in other Berne Union countries.

The work of an author of a non-Berne Union country could also be protected but only
if it was first published in a Berne Union Country or published in a Berne Union
country within 30 days of its first publication in a non-Berne Union country.

c. Qualification by the making of the work in Malaysia – Section 10(3)

This will apply to works where section 10 (1) and (2) does not apply i.e. so long as the work
is made in Malaysia it has satisfied the requirements for protection.

Scenario 4

1) Sally photostatted a book for her own private study as she could not afford to buy it.

2) Victor, the finance director of Kedecut Sdn. Bhd. purchased a new computer program, Windows
2010, and installed it in all the 100 computers in the company.

3) George, a finalist for a national song competition, sang Lemon Tree.

4) Harry rented a pirated video entitled Year 2012.

In the above situations, have they breached / infringed the Copyright Act 1987?

III. WHEN IS THERE INFRINGEMENT OF COPYRIGHT?

In general, copy right is infringed by doing any of the restricted acts in section 13 without the
license of the copyright owner and by authorizing others to do so.
For there to be infringement of copyright, there must be sufficient objective similarity between
the copyright work and the alleged infringing work such that the original work or a ‘substantial’
part of it has been reproduced.

Also, the copyright work must be the source from which the infringing work is derived. There
must be causal connection between the copyright and the infringement.

6
Section 13 (1) states that copyright in a literary, musical, or artistic work , a film or a sound
recording shall be the exclusive right to control in Malaysia-

i. The reproduction in any material form i.e. copying.

ii. The performance, showing or playing to the public
iii. The broadcasting
iv. The communication by cable, and
v. The distribution of the copies of the work to the public by sale, rental, lease or lending of
the whole work or a substantial part, either in its original or derivative form.

Architectural Work ( the art and technique of designing and building)

Section 14 – states that for works of architecture, copyright includes the exclusive right to control
the erection of any building which reproduces the whole or a substantial part of the work either
in its original from or in any form recognizably derived from the original.

Broadcasting Work
Section 15 - states that copyright in a television broadcast include the right to control the taking of
still photographs from such broadcast. Copyright in broadcast include the exclusive right to control
in Malaysia the recoding, the reproduction and the rebroadcasting of the whole or a
substantial part of the broadcast, and the performance, showing or playing to the public in a
place where an admission fee is charged of the whole or a substantial part of a television
broadcast in its original form

7
IV. WHAT IS THE DURATION OF THE COPYRIGHT?

Section 17 – 23:
For how long has the owner the exclusive right to his work?

a. Literary, musical or artistic work (other than photograph) – the life of the author and
50 years after his death.

i. If it had not been published before the death of the author, 50 years from the
beginning of the calendar year next following the year in which the work was first
published.

ii. If it was published anonymously or under a pseudonym, 50 years from the

beginning of the calendar year next following the year in which the work was first
published provided that in the event of the identity of the author becoming
known, the duration shall be calculated as above.

b. Sound recordings – 50 years from the beginning of the calendar year next following the
year in which the recording was first published.

c. Broadcasts – 50 years …. the broadcast was first made.

d. Photographs – 50 years … the photo was first published.

e. Films – 50 years … the film was first published.

f. Published editions – 50 years … the edition was first published.

V. WHAT ARE THE DEFENSES OR EXCEPTION TO INFRINGEMENT?

These are found in Section 13 (2):

a. Fair dealing i.e. where it is use for purposes of nonprofit research, private study, criticism,
review or the reporting of current events. If the use is public, it must be accompanied by
an acknowledgement of the title of the work and its authorship. Public acknowledgment is
not required for news reporting or current events by a sound recording, film or broadcast
or for the purpose of nonprofit research or private study.

8
 Fair dealing is not defined in the Act. The following factors will be considered to
determine whether there is fair dealing:
i. What is the purpose? – was it for profit or non-profit or private study?
ii. Proportion of work? – was there long extracts and short comments?
iii. Motive of the defendant?

Examples of Fair dealing – for purpose of non-profit research. (ii) private study, criticism or review
purposes. (iii) private and domestic use- use by government and other organizations such national
or state archives and libraries (iv) use in the course of judicial or legal process.

b. Inclusion in a film or broadcast of any artistic work situated in a place where it can be
viewed by the public.

c. Reproduction and distribution of copies of any artistic work permanently situated in a

place where it can be viewed by the public.

d. Including of a work in a broadcast, performance, showing or playing to the pubic, for

teaching purposes and is compatible with fair practice provided mention is made of the
source and the name of the author.

e. Using the work for the purpose of an examination by way of setting the questions,
communicating the questions to the candidates or answering the questions. However, a
Photostatted copy of a musical work shall not be made for use by an examination
candidate in performing the work.

f. Recording in schools, universities, educational institutions of a work included in

broadcast intended for such schools, universities or educational institutions.

g. Making a sound recording or a film o a broadcast, literary, dramatic or musical work or

sound recording or a film included in the broadcast so long as the making of the sound
recording or a film included in the broadcast so long as the making of the sound recording
or a film is for private and domestic use.

h. Reading or recitation in public of any reasonable extract from a published literary work if
accompanied by sufficient acknowledgement.

i. Copying by librarians and archivists and not profit is derived and no admission fee is
charged.

j. Performance of a work by a non profit making club or institution where it is for charitable
or educational purpose and is in a place where no admission fee is charged.

k. Use of works for purposes of judicial and parliamentary proceedings.

l. Making of quotations from a published work provided it is compatible with fair practice.

9
 m. Reproduction by the press, the broadcasting or the showing to the public of articles
published in newspapers or periodicals on current topics, so long as such reproductions
or broadcasting or showing has not been expressly reserved. The source must be clearly
indicted.

n. Reproduction by the press, broadcasting or performance, showing or playing to the public

of lectures, addresses and other works of the same nature which are delivered n public, if
such use is fro informatory purposes and has not been expressly reserved.

This part, students to read on their own:-

Application to Scenario 4
1. Sally may have a defense under S13 (2) on the grounds that the reproduction of the
books is for private study, provided she meets the requirements of fair dealing.

2. Victor has no defense as he had reproduced copies of the computer program, and it
was not for private study.

3. George, if the competition is a place where no admission fee is charge he has not
infringed the Copyright Act 1987.

4. Harry is privately viewing the video; Section 13 (1) does not cover such activity. No
copyright has been breached but the person who rented the video to Harry is guilty as
he has distributed the video for rental.

VI. OWNERSHIP, ASSIGNMENT AND LICENSING

Section 26 provides that the author of a work is the first owner of copyright. However, there is an
exception:

Where a work is made in the course of employment under a contract of service, the employer is
the first owner of the copyright and not the author. Similarly, where a work is commissioned by a
person, the copyright is deemed to be transferred to the person who commissioned the work and
not the author of the work. This is subject to any agreement to the contrary.

The author of a work is presumed to have copyright, unless the contrary is proved. In the case of
an anonymous or pseudonymous work, the publisher whose name is indicated in the work is
deemed to be the legal representative of the anonymous author unless otherwise proved. The
publisher then has the right to exercise and protect the rights belonging to the author under the
Act.
In the case of an unpublished work where the identity of the author is unknown, but if there is
every reason to presume that he is a citizen of Malaysia, the copyright conferred by the Act shall
be deemed to vest in the Minister of Culture. However, when the author’s identity is made known,
the author shall have the copyright.

A copyright may be assigned or transferred voluntarily or by operation of law as personal

property. For assignment to be valid it must be in writing. It may be completed or partial and
limited as to the type of rights assigned.

A license may be created orally or in writing and may be exclusive or non-exclusive.

10
VII. MORAL RIGHTS – Section 25
These are rights which are personal to the author of the work. They include the right to claim
authorship, the right to preserve the integrity of the work, the right to withdraw a work and the
right to disavow a work. These are independent of the author’s copyright; they remain vested in
the author even after the copyright in the work is transferred or assigned.

Two types of rights under the Act are:

a. The rights to object to the presentation of the work in a name other than that of the
author and,
b. The rights to object to any modifications which may adversely affect the author’s honour
or reputation.

VIII. CONSEQUENCES FOR INFRINGEMENT

A. Civil remedies
They include damages, injunction and an account for profits. The court has power to
award additional damages if it is satisfied that effective relief would not be available to the
plaintiff having regard to the flagrancy of the infringement and any benefit to have
accrued to the defendant.

B. Criminal offences
For selling, hiring, distributing, possessing, exhibiting, importing any copyright work, a
fine not exceeding RM10000.00 for each infringing copy or to imprisonment for a term
not exceeding 5 years or to both and for any subsequent offence, to a fine not exceeding
RM20000.00 for each infringing copy or to imprisonment for a term not exceeding 10
years or both.

For possessing any contrivance used or intended to be used for the purpose of making
infringing copies, a fine not exceeding RM20000.00 for each contrivance or imprisonment
not exceeding 10 years or both and for any subsequent offence a fine not exceeding
RM40000.00 for each contrivance or imprisonment term not exceeding 20 years or both.
A person who has in his possessing or custody or control of three or more infringing
copies of a work in the same form is presumed to be in possession of or to import such
copies otherwise than for private use or domestic use.

Defenses available:
He acted in good faith and had no reasonable grounds for supposing that copyright would
or might be infringed.
Where an offence is committed by a body corporate or a partner in a firm, every director,
secretary or manager of the body corporate or every other partner, is deemed to be guilty
of the offence. Unless he proves that the offence was committed without his consent or
connivance and that he had exercise all due diligence to prevent the commission of the
offence.

C. Enforcement
Where information is given on oath to any Magistrate that there is reasonable cause for
suspecting that there is in any house / premise any infringing copy or any contrivance by
which any offence has been committed, he shall issue a warrant and any Assistant
Controller or police officer not below the rank of Inspector may enter the house / premise

11
at any reasonable time by day or night and search for and seize any such copy or
contrivance.

If the Assistant Controller or police officer is satisfied that he has reasonable grounds for
believing that the infringing copies of contrivance are removed or destroyed, he may
enter without a warrant to seize.
He also has the power if necessary to enter by force and remove by force any obstruction
to enter, search and seize and detain every person found in the place until the place has
been searched. If it is impractical to remove, he may seal the premise.

Any person who assaults, obstructs, hinders or delays or refuses to give information, or
giving false information is guilty of an offence of RM25000.00 or imprisonment not
exceeding three years or both.

Items seized are liable to be forfeited. After the conclusion of the trial, whether he is
convicted or not, the court can order that the items seized be destroyed or in the case of
infringing copies, be delivered up to the first owner of the copyright / assignee or licensee.

If there is no prosecution, items, will be forfeited at the expiration of one calendar month
from the date it was seized unless a claim is made before the date.

Informers are protected and no witness in the proceeding, civil or criminal, is obliged or
permitted to disclose the name or address of an informer or the substance and nature of
the information received from him or the state any matter which may lead to his
discovery. The Asst. Controller and the police officers involved are also protected against
any action or prosecution so long as the act was done in good faith and in a reasonable
belief that it was necessary for the purpose intended to be served.

12
PATENTS
Patents Act 1983WHAT IS A PATENT?

It is the name given to a bundle of monopoly rights which give the patentee the
exclusive right to exploit an invention for a stated period of time. It is a right to stop
others from exploiting the inventor’s invention.

1. WHAT INVENTIONS ARE PATENTABLE?

Section 11 Patens Act 1983 provides:

An INVENTION is patentable if it is NEW, involves an INVENTIVE STEP and is

INDUSTRIALLY APPLICABLE.

2. DEFINITION OF INVENTION – Section 12

An invention means an idea of an inventor which permits in practice the solution to a
specific problem in the field of technology. An invention may also relate to a product or
a process.

3. Section 13 : The following are NON-PATENTABLE inventions –

i. Discoveries, scientific theories and mathematical methods.

ii. Plant or animal varieties or essentially biological processes for the production of
plants or animals, other than manmade living micro organisms, micro-biological
processes and the products of such micro-organisms.
iii. Schemes, rules or methods for doing business, performing purely mental acts or
playing games.
iv. Methods for the treatment of human or animal body by surgery or therapy and
diagnostic methods practiced on the human or animal body. However, products
used in such methods are patentable e.g. the instruments for such methods.

In the event of uncertainty, the Registrar of Patents may refer the matter to the
Examiner for an opinion. The examiner means any person, government department,
unit, organization or any foreign or international patent office or organization
appointed by the Patents Board for the purposes of determining questions concerning
patents.

4. NOVELTY – Section 14:

An invention is new if it is not anticipated by PRIOR ART.

Prior Art consists of everything disclosed to the public, anywhere in the world, by
written publication, by oral disclosure, by use or in any other way, prior to the
PRIORITY DATE of the patent application claiming the invention.

The priority date is defined in section 27A as the filing date of the application.

13
 In other words, no patent grants are given for known inventions.

Novelty involves an essentially factual investigation – has the same invention already
been made public?

In Vander Lely v Bamford the patentee claimed a hay raking machine in which the
rake-wheels were turned not by engine but by contact with the ground. The patent was
held to have been anticipated by a photograph in a journal which showed a hayrack
with this feature. Thus, it was not a novelty.

5. INVENTIVE STEP – section 15:

This means that the invention is not obvious to a person having ordinary skill in the art
having regard to the matter which forms part of the prior art.

The man ordinarily skilled in the art is described as a skilled technician who is well
acquainted with workshop technique and who has carefully read all the relevant
literature.

6. INDUSTRIAL APPLICATION – section 16:

S 16 states that an invention shall be considered industrially applicable if it can be made

or used in any kind of industry.

Thus an invention must be contrasted from discoveries. A discovery is the unearthing of

causes, properties or phenomena already existing in nature.

An invention is the application of such knowledge to the satisfaction of social needs.

(This part student to read on their own)

7. WHO MAY APPLY FOR A PATENT? Any person may make an application for a patent,
either alone or jointly.

a. The rights to a patent belong to the inventor.

b. If two or more persons had separately and independently made the same
invention, and each of them has made an application for a patent, the right to a
patent for that invention shall belong to the person whose application has the
earliest priority date.

c. Where an invention is made by an employee in the course of employment or

under the direction of the employment, the rights to the invention belong to the
employer or the person who commission the work unless there is an agreement
to the contrary. However, if the invention acquires an economic value much
greater than the parties could have reasonably foresees at the time of the
concluding the contract of employment, the inventor employee shall be entitled
14
 to equitable remuneration which may be fixed by the court in the absence of an
agreement between the parties.

d. Where the employee whose contract of employment does not require him to
engage in any inventive activity, makes an invention using data or means placed
by his employer, the right to the invention belongs to the employer. However,
equitable remuneration may be given to the employee for the economic value of
the invention.

8. WHAT IS THE PROCEDURE FOR OBTAINING A GRANT OF PATENT?

a. An application made to the Patent Registration Office (make sure the regulations
are complied with) together with an application fee together with details of the
invention.
b. Registrar will examine the application.
c. Applicant can request for a substantive examination in which case the Registrar
will refer the matter to the Examiner.
d. If satisfied, Registrar will issue a certificate of grant of the patent and a copy of
the patent together with a copy of the Examiner’s report and record the patent
in the register.
e. Registrar will cause the patent to be published in the Gazette.

9. WHAT IS THE DURATION OF THE PATENT? Section 35:

a. A patent shall expire 15 years after the date of its grant or 20 years from date of
filing, whichever is the longer.
b. If a patentee intends at the expiration of the second year from the date of the
grant, to keep the patent in force, he must 12 months before the date of
expiration of the second year and each succeeding year during the term of the
patent, pay the prescribed annual fee. Failure to so, the patent will lapse.
c. To reinstate, he will have to apply to the registrar.

10. WHAT ARE THE RIGHTS OF THE OWNER OF THE PATENT? Section 36
They include the exclusive right to:
i. Exploit the patented invention and this include making importing, offering for
sale, selling or using the product, stoking for sale, using the process.
ii. Assign or transmit the patent.
iii. Conclude licenses contracts e.g. franchise, licensing etc.

Limitation of these rights – Section 37.

These rights extend only to acts done for industrial or commercial purpose and not to
acts done for scientific research.

15
11. WHAT WILL TERMINATE A PATENT? Section 55 – by:
1. Surrender of the patent by a written declaration to the Registrar.
2. Lapse for non-payment of an annual fee.
3. Invalidation – a person may prove that - Section 56 (2):
i. What is claimed as an invention is not an invention or is not patentable
or does not satisfy the requirements of a patent.
ii. Does not comply with the regulations
iii. Any drawings which are necessary for the understanding of the claimed
invention have not been furnished.
iv. The right to the patent does not belong to the person to whom it was
granted.
v. Incomplete or incorrect information has been deliberately provided to
the Registrar for the substantive examination.

12. REMEDIES AND ENFORCEMENT

When there is an infringement of a patent the owner of the patent may obtain an
injunction and or sue for damages which are assessed on a loss of profit or on a royalty
basis.

16
 TRADEMARKS
WHAT IS A TRADE MARK?

The Trade Marks Act 1976 which has been the main source of trademark
registration rights in Malaysia is finally coming to the end of its life. While
the current act has been largely successful in setting out the framework for
trademark protection and enforcement in Malaysia, it has been felt for some
time that significant changes needed to be made to ensure that Malaysia
continued to stay abreast of and provide for the evolving nature of
protection needed by trademark owners.
The new Malaysian Trademarks Act 2019 has finally come into force on 27th December
2019! It is a total revamp of the previous Trade Marks Act 1976.

Definition of trademark under S3 of the 2019 Act:

Trademark means any sign capable of being represented graphically which

is capable of distinguishing goods or services of one undertaking from those of other
undertakings

Application for registration of trademark

Section 17(1) Any person who claims to be the bona fide proprietor of a trademark
may apply for the registration of the trademark if—

(a) the person is using or intends to use the trademark in the course of trade; or

(b) the person has authorized or intends to authorize another person to use the
trademark in the course of trade

Section 18

Single application can be filed for multiple classes of goods and services
(MyIPO has prescribed the classifications of goods and services)

S. 37 & 38 allow the applicant to file two or more separate

applications for registration and those applications may be merged into one application.

S. 22 – The date of receipt of the application by the Registrar is considered the “date of filing”.

S. 36 – the certificate of registration will only be issued upon application by registered

proprietor using the prescribed form and payment of prescribed fee.

On the registration, the Registrar will only issue a notification of the registration with the seal
of the Registrar.

17
Duration of trademark

• S. 39 – duration of trademark is 10 years and but it is renewable for a further 10 years

period within 6 months after the expiry date of the registration.

• Prescribed renewal fee and surcharge shall be imposed.

• Failure to renew within 6 months – trademark will be removed.

• If removed, the owner must apply for its restoration within 6 months from the date of
removal together with restoration fee.

Non- registrable trademark

The Registrar may refuse to register a trademark based onabsolute grounds or relative
grounds stated in S. 23 and 24 respectively.

S. 23 – Absolute grounds for refusal – a trademark is non-registrable absolutely if it:-

a) cannot be represented graphically;

b) cannot distinguish one trade from another;

c) is not distinctive;

d) serves to describe the goods / services i.e. quality, quantity,kind, purpose, geographical
origin etc.

e) becomes customary in the current language of the territory or

practice of trade.

f) is in respect of shape marks, the shape

I. results from the nature of the goods themselves;

II. is necessary to obtain a technical result; or

III. gives substantial value to the goods.

g) is a name of a country;

h) is a geographical indications;

i) is likely to deceive or cause confusion, or against the law;

j) is deceiving or misleading as to the nature, quality or

geographical origin of the goods or services;

k) is against public policy or immoral;

18
 l) is scandalous or offensive;

m) is prejuducial to the interest or security;

n) contains name or representation of someone living or dead

unless consent of the person (if living) or the representative (if
dead) is obtained;

o) is a flag of a country, national emblem, insignia, or royal arms

unless authorised by competent authoritie or organisations;

p) is a single chemical element or compound or declared by who as

non-proprietary name;

q) has a word or words “Patent”, “Patented”, “By Royal Letters

Patent”, “Registered”, “Registered Design” and “Copyright”.

r) any sign as prescribed i.e. by the Trademark Regulations 2019:-

• Representations of His Majesty the Yang di-Pertuan Agong, the Sultans.

• Representations of the national flower, the Malaysian flag, Masjid Negara.

• The words “Red Crescent” or the “Geneva Cross”, or “Swiss Federal Cross”.

• Representation of the Imperial Arms, Imperial Crowns, National flags, the Malaysian
Army, Royal Malaysian Air force and the Royal Malaysian Police.

• The word ‘ASEAN”. (The list goes on and on…)

S. 24 – Relative grounds for refusal – a trademark is non-registrable based on relative grounds

If:-

a) it is identical with earlier trademark;

b) the goods / services are identical with the goods / services of

the earlier trademark;

c) it is likely to confuse the public:-

I. where it is identical with an earlier trademark or with the goods / services of

the earlier trademark;
II. where it is similar to an earlier trademark or with the goods / services of
the earlier trademark;

d) it is identical with or similar to a well-known trademark;

19
 e) its use in Malaysia is prevented;-

I. by law to protect unregistered trademark i.e. common law

of passing-off;
(used to enforce unregistered trademark rights)

ii. by an earlier right i.e. copyright or industrial design law;

iii. on the grounds raised by the owner who has an earlier right
(in copyright or industrial design law) in legal proceeding
to oppose the registration.

Effects of registration

After the trademark is registered, the owner / proprietor will be conferred the following rights:-

• Exclusive right of use: S. 48(1) – the registered proprietor the exclusive right to use the
trademark in relation to the goods or services in trading and right to authorize other person to
use the mark.

• Right to sue for infringement: S. 48(2) – the registered proprietor has the right to obtain relief
for infringement of his trademark. This is further explained in S. 56 TMA 2019.
Unregistered trademark owner can only sue for passing-off under common law. (S. 159)

• Legal evidence – S. 36 states that the certificate of registration will only be issued upon
application by registered proprietor.

If any person wishes to initiate any legal proceedings against a registered trademark, it shall be
noted that:-

(a) the fact that a person is registered as proprietor of the trademark shall be prima
facie evidence of the validity of the original registration of the trademark and of all
subsequent assignments. – S. 52; and

(b) the registration is conclusive for the period of 5 years from the date of
registration unless it is shown that the original registration was obtained by
fraud or against S. 23(5) or that the trademark was not distinctive of the goods or
services of the registered proprietor. – S. 53.

• Right to use of a trademark symbol: –

I. ® – for registered trademarks in relation to both goods and

II. services.
III. ™ – for unregistered trademark in relation to goods.
IV. ℠ – for unregistered trademark in relation to services.
V. E.g. Starbucks® and McDelivery™, Bank of America℠.

20
Infringement of trademarks

A trademark is infringed if a person, without the consent of the owner, uses in the
course of trade :-

• an identical sign with the trademark and the goods and services are identical with
those within the scope of its registration S.54(1)

• a sign identical with the trademark and uses the sign for goods /services which are
similar to those within the scope of registration and likely to confuse the public. S.54(2)

• a sign similar to the trademark and uses the sign for goods /services which are
identical with / similar to those within the scope of registration and likely to confuse
the public. S. 54(2)

Defences to infringement of trademarks (S. 55)

• A person does not infringe the trademark if:-

a) he uses in good faith:-

I. his name / name of his place of business;

II. name of his predecessor in business / name of his predecessor’s place of

business

III. a sign to indicate the description of the goods / services

b) he uses it to indicate the purpose of the goods which includes accessories or spare
parts or service which is according to honest practices in commercial matters

c) he or his predecessor used the trademark (or identical with or similar to the
trademark) before it was registered by the proprietor i.e. common trademark;

d) he uses it for non-commercial use, news reporting or news commentary for the
first time;

e) he uses it with the consent of the owner / licensee;

f) its use is substantially identical with one of two or more trademarks in his
exercise of right to use given by registration.

g) if another registered trademark is used in relation to goods / service for which it

is registered.

21
Remedies for infringement of trademarks

S. 56(3) - the remedies which are ordinarily awarded to successful claimants in an

infringement action includes

• injunctions preventing the goods involved in infringement from entering into channels
of commerce, damages & account of profits.

• mandatory orders where the infringement involves the use of counterfeit marks i.e.
seizure of suspected infringing goods, materials or articles and supply of relevant
documentary evidence. Additional damages may be awarded to the owner subject to
the flagrancy of the infringement, benefit received by the infringer, the need to punish
and all other relevant matters.

22