Patents, Utility Innovations, Trademarks, Industrial Design, Geographical Indication, Plant Variety Rights are intellectual property rights that exists only upon registration to be enforceable.

That aside, copyright may be registered on a voluntary basis. Registration is not a requirement for copyright to exist.

Notwithstanding the above, any third parties (adverse parties) may still file an application in court to invalidate and/or revoke the registration of the above intellectual property registrations.

Where an application is refused, the applicant may file an appeal to the High Court against the registrar’s decision.

The official fees above are exclusive of any handling fee that may be imposed by the IP office and any other add-on charges that may be applicable if any add-on services are selected.

Generally, as provided in our answer to Question 2, in most cases, a 6-months grace period post renewal due date will be given whereby a renewal could still be filed subject to paying the applicable surcharge.

In the event where the renewal is not filed within a grace period, the registration may still be reinstated within 6 months from the lapse of the grace period subject to the filing of the requisite documents and payment of the prescribed fee.

Generally, as provided in our answer to Question 2, in most cases, a 6-months grace period post renewal due date will be given whereby a renewal could still be filed subject to paying the applicable surcharge.

In the event where the renewal is not filed within.

Generally, assignment of intellectual property rights must be recorded particularly in Patents, Utility Innovations, Trademarks, Industrial Designs, Geographical Indication, and Plant Variety Rights must be recorded in order for an effective enforcement rights against any third parties.

In Malaysia, licensing of intellectual property rights to third parties are usually governed under contractual agreements between parties. As such, the elements of contract (i.e., offer, acceptance, intention to create legal relation, legal capacity, certainty and consideration) need to be fulfilled for contracts to be valid and enforceable.

It is not compulsory for licensing to be recorded with the IP office in Malaysia however it is recommended to do so to ensure that the information reflected in the IP office aligns to give public notice. This would also ease the process of enforcement by the licensee on the licensor’s behalf (if any).

Exclusive and non-exclusive licensees are usually given different rights particularly in the context of scope of rights and ability to commence legal action against any infringers.

Usually, an exclusive licensee is given the first right of refusal where the licensor is obliged to give priority to the exclusive licensee is distributing/manufacturing/selling its goods and/or services prior to offering such goods and/or services to any other third party. The exclusive licensee may also be given rights to sub-license the intellectual property rights subject to the terms and conditions laid out in the agreement. On the contrary, non-exclusive licensees are not given any exclusivity hence the licensor is at liberty to appoint any other licensees.

Further, exclusive licensees are usually given the right to sue any infringers however a non-exclusive licensee will have to rely on the licensor to sue any infringers.

Some notable criminal sanctions for infringement of the following intellectual property rights in Malaysia are as below.

It is noted that the laws of Malaysia does not provide for criminal sanctions for patent infringements, utility innovations infringement, industrial design infringement, geographical indication infringement, layout-designs of integrated circuits infringement, and new plant variety rights infringement hence only civil remedies are available.

Further to the above, the owners may also enforce its IP rights by way of arbitration proceeding, which is governed by the Arbitration Act 2005. However, an arbitration proceeding requires the existence of a written arbitration clause or a separate arbitration agreement as evidence in support of the parties’ consent for resolving the dispute by way of arbitration.

In addition, the owners may also opt to resolve IP disputes by way of mediation, which is governed by the Mediation Act 2012. However, mediation is not applicable to proceedings involving the remedy of temporary or permanent injunctions, hence the resolution of IP disputes through mediation will not impose a mandatory injunction against the infringer.

Generally, a proceeding at the IP office and/or board takes about 12 months however delays are not unusual due to the high number of backlog cases being handled by the IP office and board.

Meanwhile, a proceeding at the civil court takes about 6~12 months depending on the complexity of the matter and the civil court’s availability. In the event where the matter requires urgency, a certificate of urgency may be filed subject to the court’s discretion.

The cost (official fees) for an opposition proceeding is dependent upon the types of intellectual property. The official fee to file an opposition usually ranges between MYR300 to MYR950. This fee is exclusive of any attorney fees, applicable tax and disbursements.

The cost (official fees) for court proceeding is dependent on the complexity of the matter. For example, the official fees for a simple infringement proceeding in court may be in the region of MYR1,500.

For invalidation, revocation, and cancellation proceedings, the Malaysian High Courts generally have jurisdiction. Invalidation proceedings commence by way of filing of the originating summons supported by an affidavit setting out the grounds for invalidation, revocation and cancellation. Thereafter, the respondent is required to reply to the affidavit within 14 days from the date of receipt of the applicant’s affidavit. The applicant is then given 14 days from the date of receipt of the respondent’s affidavit to file a further reply. A hearing would be fixed by the court for parties to submit legal arguments before which parties will be directed to file their respective written submissions (for legal arguments) and reply (if any). The court will thereafter fix a decision date to deliver its decision. A typical smooth invalidation, revocation and cancellation proceeding takes about 6~12 months depending on the court’s availability. In the event if any party is dissatisfied with the court’s decision, the dissatisfied party may file an appeal to the court of appeal.

Similarly, the Malaysian High Courts generally deal with infringement proceedings related to intellectual property rights. Infringement proceedings usually begin by way of a filing of writ summons and statement of claim. The defendant (infringer) is then given 14 days from the date of receipt of the writ and statement of claim to file a memorandum of appearance, and subsequently another 14 days to file his defence (and counterclaim, if any). The plaintiff (party suing) is then given 14 days from the date of receipt of the defence to file a reply. Thereafter, the pleadings will be deemed closed. The Court will then fix a date for pre-trial case management, whereby directions will be issued to parties on the pre-trial documents and witness statement to be exchanged prior to the trial date, as well as the full trial dates for the examination of witnesses. After the examination of all the witnesses, the Court will fix the dates for parties to exchange the written submissions and written reply submissions. Subsequent to the exchange of submissions, the Court will fix a decision date, whereby parties may be allowed to submit further by way of oral submission (which is subjected to the Judge’s discretion), and a decision will generally be delivered on the decision date itself.  In the event that either party is dissatisfied with the decision given, party may file an appeal to the Court of Appeal.

Pursuant to Section 31 of the Customs Act 1967 and Part XIII of the Trademarks Act 2019, there are existing border measures in Malaysia which serve to prohibit the importation of infringing goods into Malaysia.

First, the registered proprietor is required to file an application to the Trademark Registrar of MYIPO which shall provide the time and place whereby the infringing goods are expected to be imported into Malaysia for the purpose of trade. The application is to be supported by all necessary documents and information which include but not limited to the details of the importer, the shipment number, the infringing goods, the registration number of the vehicle/ship, and the anticipated date of arrival, that would enable the officers from the Royal Malaysian Customs Department (“Customs”) to identify the infringing goods.

Once approved, the Trademark Registrar will notify the Customs to take the necessary actions in prohibiting the import of infringing goods stipulated in the application, whereby the Customs may conduct necessary raids, seizures, and detention of the infringing goods. At the same time, the registered proprietor is also required to provide a deposit as security for the border measure.

Upon the seizure of the infringing goods by the Customs, the Customs will then notify the Trademark Registrar, the importer, as well as the registered proprietor, providing details of the infringing goods and their locations. The notice by Customs will specify that the infringing goods will be released to the importer unless an infringing proceeding at the civil court is commenced within a specific period from the date of the notice.

Presently, the non-court enforcement options or dispute resolution mechanisms available in Malaysia are opposition proceedings to be filed at MYIPO (subject to types of intellectual property), the lodging of complaints with KDNPHEP Enforcement Division (limited to infringing and counterfeit goods only where no civil remedies are furnished), arbitration proceeding (subject to parties’ consent) and mediation (subject to parties’ consent). It is however important to note that these non-court enforcement options have limited jurisdictions to grant remedies.

Settlement of IP disputes can be conducted in the following manner:-

1. By way of court proceeding;
2. Conducted privately between the parties through negotiation and settlement agreement;
3. Conducted through mediation; or
4. Conducted through arbitration.

However, the remedies sought for should determine the options available for selection.

a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence?

In Malaysia, the judges presiding at the high court are not required to have an engineering background. In the event that an expert opinion is required, the Court may on its own initiative, or upon the application by the parties to the proceeding, allow for expert witnesses to be called to provide their expert opinions on the subject matter of the suit. The decision however remains with the judge to decide whether to be stand guided by the expert’s opinion.

b)What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?

In Malaysia, a party may file the following interlocutory application to obtain the evidence prior to the trial:-

1. Anton Piller Order
2. Norwich Pharmacal Orders
3. Discovery Application
4. Interrogatories Application
5. Inspection of Document Application

These applications may be filed on a case-by-case basis.

Generally, in an infringement proceeding, information and evidence submitted to the Court are scrutinised through witness examination by the opponent. An evidence-in-chief of a witness shall be given by way of witness statement, and the attendance of a witness to trial shall be mandatory. During the trial, the witness shall be subject to cross-examination by the opponent and re-examination (if any). In the event of default of attendance, the impugned witness statement will not be received in evidence by the Court. It is also a usual practice for documents to be tendered as evidence by a witness in court. As such, examination of witness is a practice frequently employed in Malaysia.

Meanwhile, in an invalidation, non-use cancellation, and revocation proceeding, information and evidence are submitted via affidavit. As such, no examination of witnesses is usually conducted in such cases.

The common defences (amongst others) raised by an alleged infringer in the following intellectual property areas are as below.

In relation to patent:

1. it is not new and is anticipated by a prior art
2. it does not involve an inventive step and is obvious to a person having ordinary skill in the art
3. it is not industrially applicable and cannot be made or used in any kind of industry
4. it is not an invention
5. it is a discovery, scientific theory and mathematical method

In relation to trademark:

1. Not visually, phonetically and/or conceptually similar
2. No identicality and/or similarity to the goods/services
3. No likelihood of confusion amongst consumers
4. Used in good faith of the infringer’s own name / name of place of business or the predecessor’s name / name of the predecessor’s place of business
5. Prior use before the date of registration of the registered trademark
6. Used for non-commercial/description purpose

In relation to copyright:

1. the acts were done by way of fair dealing for purposes of research, private study, criticism, review, reporting of news or current events accompanied by acknowledgements
2. the acts were done by parody, pastiche or caricature
3. the reproduction made in schools, universities or educational institutions of a work included in a broadcast intended for such schools, universities or educational institutions
4. the performance, showing or playing of a work by a non-profit making club or institution where such performance, showing or playing is for charitable or educational purpose and is in a place where no admission fee is charged

In relation to industrial designs:

1. the registration of the industrial design ought to be revoked/cancelled
2. it is not imported for use of trade or business

Generally, anyone who is an aggrieved party has a cause of action to challenge the intellectual property rights or file an action.

(A) Patents

1. Opposition proceeding at MYIPO – 6 months after the date of publication of the grant of the patent.
2. Invalidation proceeding at the civil court – Invalidation action to be filed after the grant of patent and during the subsistence of the patent.
3. Infringement proceeding at the civil court – Infringement action to be filed after the grant of patent and during the subsistence of the patent, but not after 6 years from the act of infringement.

(B) Trademarks

1. Opposition proceeding at MYIPO – Opposition to be filed within 2 months from the date of publication of the trademark in the IP Journal
2. Revocation proceeding at the civil court – Generally, revocation for non-use of trademark is filed after 3 years from the date of registration of the trademark
3. Invalidation proceeding at the civil court – Invalidation action to be filed after the registration of trademark and during the subsistence of the trademark.
4. Infringement proceeding at the civil court – Infringement action to be filed after the registration of trademark and during the subsistence of the trademark, but not after the expiry or removal of the trademark.

(C) Copyrights

1. Infringement proceeding at the civil court – Infringement action to be filed during the subsistence of the copyright,.

(D) Industrial Designs

1. Revocation proceeding at the civil court – Revocation action to be filed after the registration of industrial design and during the subsistence of the industrial design.
2. Cancellation proceeding at the civil court – Invalidation action to be filed after the registration of industrial design and during the subsistence of industrial design.
3. Infringement proceeding at the civil court – Infringement action to be filed after the registration of industrial design and during the subsistence of the industrial design, but not after 5 years from the act of infringement.

For patent and trademarks, the owner may commence opposition proceeding at MYIPO by way of filing of Notice of Opposition and Grounds of Opposition by the opponent against the applicant of the impugned patent, and an Affidavit of Service shall be filed within 14 days to prove service. After that, the applicant is required to file a Counterstatement within 2 months. Subsequently, the opponent is required to file the evidence by way of Statutory Declaration in support of the Grounds of Opposition within 2 months. Then, the applicant is required to file the evidence by way of Statutory Declaration in support of the application for grant of patent within 2 months. The opponent then may file such evidence in reply by way of Statutory Declaration within 2 months. Next, the opponent and applicant will file their respective written submissions within 2 months from the date of notice by MYIPO. After the filing of written submissions, the Trademark Registrar shall consider the evidence, exhibit and written submissions filed and may within 2 months communicate to parties his decision and the grounds of decision in writing.

Some examples of grounds for opposition that may be raised are that the applicant’s mark is identical and/or closely similar to the opponent’s marks or that the applicant’s mark was applied in bad faith.

On the other hand, for patents, trademarks and industrial designs, which provides for invalidation, revocation and/or cancellation proceedings, these proceedings are commenced at the Malaysian High Court through the filing of Originating Summons and Affidavit in Support by the applicant. Upon receipt of the Affidavit in Support, the respondent is required to file an Affidavit in Reply within 14 days. Then, upon receipt of the Affidavit in Reply, the applicant is required to file an Affidavit in Further Reply within 14 days. After that, the applicant and the respondent are required to file written submissions and written reply submissions, which are generally completed within 1 to 2 months. After the exchange of submissions, a hearing date will be fixed by the Court, whereby parties may be allowed to submit further by way of oral submission (which is subjected to the Judge’s discretion), and a decision will generally be delivered on the hearing date itself.  The relevant grounds for invalidation, revocation and/or cancellation proceedings are as mentioned above.

Infringement proceeding is commenced at the Malaysian High Court through the filing of a Writ and Statement of Claim by the plaintiff. Upon service of the Statement of Claim, the defendant is required to enter into appearance through the filing of a Memorandum of Appearance within 14 days. Thereafter, the defendant is required to file the Statement of Defence (as well as Counterclaim, if desired) within 14 days after the time limited for appearing or after the Statement of Claim is served on him, whichever is the later. Upon service of the Statement of Defence, the plaintiff is required to file a Reply to Defence (as well as Defence to Counterclaim, if necessary) within 14 days. If the defendant has pleaded for Counterclaim, the defendant may opt to file a Reply to Defence to Counterclaim within 14 days from date of service of the Defence to Counterclaim. Thereafter, the pleadings will be deemed closed. The Court will then fix a date for pre-trial case management, whereby directions will be issued to parties on the pre-trial documents and witness statement to be exchanged prior to the trial date, as well as the full trial dates for the examination of witnesses. Generally, evidence-in-chief of a witness shall be submitted by way of a written witness statements, whereby cross-examination and re-examination will subsequently be conducted orally during the trial. After the examination of witnesses, the Court will fix the dates for parties to exchange the written submissions and written reply submissions. Subsequent to the exchange of submissions, the Court will fix a decision date, whereby parties may be allowed to submit further by way of oral submission (which is subjected to the Judge’s discretion), and a decision will generally be delivered on the decision date itself. The relevant grounds for infringement proceeding are as mentioned above.

In Malaysia, a person may seek to obtain a declaration of non-infringement of existing patents, trademarks, copyrights or industrial designs, either through private negotiation with the owner of the IP rights, or through commencement of legal proceeding at the Malaysian High Court. Further, a person may also seek to obtain consent, approval and/or licence from the owner of the existing IP, whether express or implied, through payment of licensing fees.

In an infringement proceeding, should there be a real risk of dissipation of assets, the plaintiff may file an interlocutory application to obtain an interim remedy, namely, a Mareva injunction, which serves to freeze the assets of the defendant pending the disposal of the action.

If the owner successfully proved that infringement has been committed before the civil court, the owner may be entitled to the following final remedies, subject to the Court’s discretion:-

1. Declaration of infringement;
2. Injunction to prohibit further infringement;
3. Injunction to deliver the infringing materials;
4. Injunction to destroy the infringing materials;
5. Monetary compensation in a lump sum or based on an account for profit;
6. Aggravated damages;
7. Exemplary damages; and
8. Punitive damages.

The cost for enforcement of IP rights is on a case-by-case basis depending on the complexity of the matter.

Generally, the successful litigant in the court proceeding will be awarded with costs however, the costs awarded are often minimal that covers only the official fees and disbursements to a certain extent.

In relation to security for costs, the defendant to an action may apply for the same from the plaintiff, under the following circumstances:-

1. that the plaintiff is ordinarily resident out of the jurisdiction;
2. that the plaintiff (not being a plaintiff who is suing in a representative capacity) is a nominal plaintiff who is suing for the benefit of some other person and that there is reason to believe that he will be unable to pay the costs of the defendant if ordered to do so;
3. that the plaintiff’s address is not stated in the writ or originating summons or is incorrectly stated therein; or
4. that the plaintiff has changed his address during the course of the proceedings with a view to evading the consequences of the litigation.

As such, since the owner who is commencing the enforcement proceedings against the infringer is the plaintiff of the action, the owner is not entitled to apply for security of costs from the infringer.