As of 31/05/20 all authors are still with LH&G.
What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
Intellectual property (“IP”) rights exist in our jurisdiction to protect:
- Inventions: patents, certificate for a utility innovations and confidential information
- Brands: trademarks*, passing off, geographical indications
- Other creations, technology and proprietary interests: copyrights (which includes literary works; musical works; artistic works such as graphic work, photograph, sculpture or collage, works of architecture and works of artistic craftsmanship; films; sound recordings; broadcasts; published editions of works; derivative works), plant varieties and industrial designs.
*At the outset, we wish to highlight that On 27.12.2019, the new Trademarks Act 2019 (“TMA 2019”) came into force.
Different types of trademarks have been introduced in the TMA 2019, including standard trademarks, non-conventional trademarks (such as sound, holograms, product shapes or packages, movement sequences, colours, smells and positions), certification trademarks, well-known trademarks and collective trademarks.
Under the new regime, defensive trademarks and association of trademarks are no longer available. Existing defensive trademarks shall not be subject to non-use revocation within 5 years from the commencement date of TMA 2019.
The rights in trademarks are based on TMA 2019, while case law supports and explains in greater detail the relevant principles. There are currently no case laws on the TMA 2019. It is presumed that existing case laws under the Trade Marks Act 1976 (“TMA 1976”) which deal with rights, liabilities and obligations maintained under the TMA 2019 will be of persuasive nature in interpreting TMA 2019.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Patents: Section 35 of the Patents Act 1983 (“PA”) provides that the duration of a patent shall be for 20 years from the date of filing of the application. An annual renewal fee must be paid to keep the patent in force.
Utility Innovations: The PA read together with the Second Schedule of the PA provides that the duration of a certificate for a utility innovation shall be for ten years from filing, extendable for two consecutive terms of 5 years, amounting to maximum 20 years of protection. An annual renewal fee must be paid to keep the utility innovation in force.
Confidential information: common law protection. Duration is potentially perpetual.
Trademarks: Section 39 of the TMA 2019 provides that the duration of a registered trademark is for ten years and is renewable indefinitely every ten years.
Geographical indications: Section 19 of the Geographical Indications Act 2000 (“GIA”) provides that the period of registration of a geographical indication shall be ten years and is renewable every ten years.
Copyright: The Copyright Act 1987 (“CA”) provides for the duration of copyright which depends on the type of work.
Literary, musical or artistic works: life of the author plus 50 years after death. In joint authorship, computation starts from the date of the author who dies last.
Sound recording, films, works of Government, Government organisations and international bodies, typographical arrangement of a published edition and broadcasts continues to subsist until the expiry of 50 years computed from the beginning of the calendar year next following the year in which the sound recording, film government work, broadcasts and edition was first published or made.
Duration for performers is until the expiry of 50 years from when the performances was performed or fixed in a sound recording.
Industrial designs: Section 25 of the Industrial Designs Act 1996 (“IDA”) provides that the registration of an industrial design shall be for a period of 5 years from filing, extendable for four consecutive terms of 5 years each, amounting to maximum 25 years of protection.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
The person whose name is recorded in the Register of Patents as the grantee of a patent.
The right to a patent for an invention which is made in the performance of a contract of employment or in the execution of a commissioned work is deemed to accrue to the employer or the person who commissioned the work, unless provided otherwise in said contract of employment or contract for execution of work.
The person who succeeds in the application for a certificate for a Utility Innovation.
The right to a certificate for a utility innovation for a utility innovation which is made in the performance of a contract of employment or in the execution of a commissioned work is deemed to accrue to the employer or the person who commissioned the work, unless provided otherwise in said contract of employment or contract for execution of work.
The first user of the trademark in the course of trade is the owner of a trademark.
Jointly to the producers carrying on their activity in the geographical area specified in the Register.
The presumption is that copyright will vest initially in the author of the work.
Copyright is deemed to be transferred by operation of law to the person who commissioned the work or the author’s employer when a work is commissioned by a person who is not the author’s employer under a contract of service or apprenticeship or created in the course of the author’s employment subject to any agreement between the parties excluding or limiting such transfer.
The person registered as the owner in the Register of Industrial Designs.
Where an industrial design is created in pursuance of a commission for money or money’s worth or is created by an employee in the course of his employment, the person commissioning the industrial design or the employer is the original owner of the industrial design, however, this is subject to any agreement to the contrary between the parties.
Which of the intellectual property rights described above are registered rights?
Patents, Utility Innovations, Trademarks, Geographical Indications and Industrial Designs.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Patents & Utility Innovations:
Any person either alone or jointly with another person.
Procedure: File application → Date of Filing Issued → Preliminary Examination → Acceptance + Application laid open for public examination → Request for substantive or modified substantive examination → Substantive examination → Certificate of grant issued → Gazetted.
The proprietor of the trademark which has been used or proposed to be used by him.
Procedure: File application → Date of Filing Issued → Formality checking to see compliance with statutory requirement (plus amendments if non-compliance) → Search for prior marks & examination on the registrability → Gazetted for opposition upon acceptance → Certificate of registration issued upon no opposition
A person who is carrying on an activity as a producer in the geographical area specified in the application with respect to the goods specified in the application.
Procedure: File application → Formality examination to see compliance with statutory requirement → Amendment in the event of non-compliance → Advertised for opposition → Registration
The original owner of an industrial design.
Procedure: File application → Formality examination to see if definition and requirements are fulfilled → Amend & file submission if requirements not fulfilled → Novelty search → Certificate of registration issued → Gazetted
How long does the registration procedure usually take?
Patents & Utility Innovations:
At least 3 years.
12 to 18 months
6 to 9 months
8 to 12 months
Do third parties have the right to take part in or comment on the registration process?
Patents & Utility Innovations:
Yes, when applications are laid open for public inspection.
Trademarks and Geographical Indications:
Yes, during the opposition stage.
What (if any) steps can the applicant take if registration is refused?
Patents & Utility Innovations:
The Applicant is given 3 months to submit correction submissions where the application form is not complete, otherwise the application is considered invalid. Where there is statutory non-compliance during Preliminary Examination, the Applicant is given 3 months to submit correction submissions, which will then go back for Preliminary Examination, otherwise, the application is refused. Where the Request for Substantive or Modified Substantive Examination is not received, the application will be withdrawn. Where there is statutory non-compliance during Substantive Examination, the Applicant is given 2 months to submit correction submissions/arguments, which will then go back for Substantive Examination, otherwise the application is refused.
Any person aggrieved by any decision or order of the Registrar may appeal to the High Court and subsequently to the Court of Appeal. In such a situation, the same rules of procedure on appeal shall apply as to appeals to the High Court from a decision of a subordinate Court in civil matters. This suggests that the Court of Appeal may be the final appellate Court for matters that originate from the Registrar. This is in line with the recent case of Merck KGAA v Leno Marketing (M) Sdn Bhd (Registrar of Trade Marks, Interested Party)  5 MLJ 1, where the Federal Court held that in an “appeal” from the Registrar of Trade Marks to the High Court, the High Court is exercising its appellate jurisdiction. Whilst Merck KGAA was a trademark case pertaining to the Registrar’s dismissal of Merck KGAA’s opposition proceedings, the wordings of the provisions are similar and thus analogy may be drawn with patents.
Upon issuance of an Objection during Substantive Examination, the Applicant may appeal by way of written submissions. Upon issuance of a Maintained Objection, the Applicant may request for a Hearing with the Trademark Office. If there is a Refusal after the Maintained Objection, the Applicant may appeal to the High Court and subsequently to the Court of Appeal. Pursuant to Merck KGAA, the Court of Appeal shall be the final appellate court for matters that originated from the Registrar.
If there is a Refusal upon Opposition proceedings commenced by a third party, the Applicant may appeal to the High Court and subsequently to the Court of Appeal.
Where there is non-compliance with statutory requirements during the Formality Examination, the Applicant may make Amendments, which will then go back for Formality Examinations. Where the Amendments are not accepted, the application is refused with no means for appeal.
In the event the registration is opposed by a third party, and the opposition is accepted, the application will be withdrawn. The applicant can then appeal to the High Court. Section 31 of the GIA provides that an appeal to the High Court on the Registrar’s decision pertaining to opposition proceedings and cancellation and rectification proceedings, the decision of the High Court shall be final and not be subject to any further appeal.
Where there is non-compliance with statutory definitions and requirements, the Applicant may make Amendments and Submissions within 3 months, otherwise the Application is considered abandoned. Where the Application is deemed to comply, it will proceed to Novelty Search. Where the Application is objected to during the Novelty Search, the Applicant must provide a Feedback within 3 months, otherwise the Application will be refused. Upon abandonment or refusal, the Applicant can appeal to the High Court and subsequently to the Court of Appeal. Similar to patents, an appeal from the decision or order of the Registrar, the same rules of procedure on appeal shall apply as to appeals to the High Court from a decision of a subordinate Court in civil matters. Reading Merck KGAA in tandem with this provision, it suggests that the Court of Appeal may be the final appellate Court for industrial design matters originating from the Registrar.
What are the current application and renewal fees for each of these intellectual property rights?
Application: The Official Fees are approximately RM1,470 for one application with 10 claims or less. The total amount is dependent of the number of claims, each additional claim will cost RM20.
Renewal: In making annuity payments, the Official Fees is from RM290 to RM2,700 depending on the year of the renewal.
Application: The Official Fees is RM140 for one application.
Extension: The Official Fees is RM140.
Application: The Official Fees is RM1,120 for one trademark in one class for a straightforward registration and the specifications of the trademark are not as per the pre-approved list of goods and services issued by the Intellectual Property Corporation of Malaysia (“IPCM”). In the event the specifications of goods or services are as per the pre-approved list, the official fees for application for registration of one trademark in one class is RM970.
Renewal: The Official Fee is RM1,000 for each class.
Application: The Official Fee for a straightforward registration is RM700.
Renewal: The Official Fee is RM420.
Application: The Official Fees for filing application is RM500 for one industrial design application in single view in one class in a straightforward application. The total amount is dependent on the number of designs filed as part of a multiple application for the same article, each additional design will cost RM500.
Renewal: The Official Fee is RM800.
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
Patents, Utility Innovations and Industrial Designs: the grace period is six months from the expiry date, with an option to restore the registration.
If the registered proprietor does not renew the trademark before the registration expires, there is a grace period of 6 for the renewal of said registration.
After the grace period, the registration shall be deemed removed. However, a registered proprietor may request for restoration of his removed registration within 6 months from the date of its removal.
The grace period is one year from the expiry date, with an option to restore the registration.
What are the requirements to assign ownership of each of the intellectual property rights described above?
Deed of assignment, the relevant prescribed form and the requisite filing fees.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
No statutory penalties but no assignment shall have effect against third parties unless so recorded in the Register.
Under the TMA 2019, an assignment shall be deemed ineffective against a person acquiring a conflicting interest in the registered trademark in ignorance of the transaction where the assignment is not registered. If the assignment is not recorded in the Register, the assignee may not be able to establish its exclusive rights afforded under TMA 2019. A person who becomes a registered proprietor by virtue of assignment shall not be entitled to damages or an account of profit in respect of any infringement of the registered trademark occurring after the date of the transaction and before the date of the application for the registration of the assignment in the register.
What are the requirements to licence a third party to use each of the intellectual property rights described above?
Must be in writing signed by or on behalf of the contracting parties.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Under the TMA 2019, every person shall be deemed to have notice of a licence if the particulars of the grant of the licence are entered in the Register.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
There is no distinction between the rights of exclusive and non-exclusive licensees to request the patentee to institute infringement proceedings unless there are provisions to the contrary in the licence contract.
Where the patentee refuses or fails to institute infringement proceedings within three months from the receipt of the request, the licensee is able to institute the proceedings in his own name after notifying the patentee of his intention to do so. The patentee has the right to join in the proceedings.
There is a distinction between the rights of an exclusive and non-exclusive licensee with regards to enforcement of IP rights.
A licensee shall be entitled to bring infringement proceedings against the infringer in his own name. A licensee shall be entitled, unless his licence or any license through which his interest is derived, provides otherwise, to call on the registered proprietor of the trademark to take infringement proceedings in respect of any matter which affects his interests. If the registered proprietor refuses or does not take infringement proceedings within two months after being called upon, the licensee may bring the proceedings in his own name as if he were the registered proprietor. Where infringement proceedings are brought by a licensee, the licensee may not, without leave of the Court, proceed with the action unless the registered proprietor is either joined as a plaintiff or added as a defendant.
An exclusive licensee need not call on the registered proprietor of the trademark to take infringement proceedings. It is noteworthy that where proceedings for infringement of a registered trademark brought by the registered proprietor or an exclusive licensee relate wholly or partly to an infringement in respect of which they have concurrent rights of action, the registered proprietor or the exclusive licensee may not, without leave of the Court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant.
There is no distinction between the rights of exclusive and non-exclusive licensees in respect of enforcement. Except against the copyright owner, the exclusive licensee shall have the same rights of action and be entitled to the same remedies as those available in a legal action brought by a copyright owner for infringement of copyright as if the licence had been an assignment.
Where an action for infringement of copyright is brought either by the copyright owner or the exclusive licensee, and the action relates to an infringement in respect of which they have concurrent rights of action under that section, he is not entitled, except with the leave of court, to proceed with the action unless the copyright owner or the licensee is joined as a plaintiff in the action or added as a defendant. An exclusive licensee however, may obtain an interlocutory injunction without having to join the copyright owner as a party in the application.
Where an action, in so far as it is brought by the copyright owner for infringement of copyright, relates to an infringement in respect of which the owner of the copyright and the exclusive licensee have concurrent rights of action, and an account of profits is directed to be taken in respect of that infringement, then subject to any agreement of which the court is aware whereby the application of those profits is determined as between the owner of the copyright and the exclusive licensee, the court shall apportion the profits between them as the court may consider just.
Where an exclusive or non-exclusive licensee wants to institute any infringement proceedings, the licensee must prove that they had made a prior request to the registered owner to institute proceedings for the infringement complained of by him and that the registered owner had refused or failed to institute the proceedings within three months from the receipt of the request. The registered owner however still has the right to join the proceedings.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Under the TMA 2019, The following infringing acts may be a criminal offence:
- Counterfeiting a trademark;
- Falsely applying a registered trademark to goods or services;
- Making or possessing an article which is designed or adapted for making copies of a registered trademark;
- Importing or selling goods with a falsely applied registered trademark.
Under TMA 2019, the relevant procedure on investigation and enforcement of the criminal offences are provided in Part XVI.
Criminal charges in respect of false application of trademarks to goods and services are further provided under TDA 2011.
Under the TMA 2019 and TDA, certain government-appointed officers (“Controllers”) are conferred powers of investigation, search, seizure, and arrest. An investigation may be launched upon receiving a complaint or when the Assistant Controller has reasonable grounds to suspect that an offence will be committed.
Such a complaint must specify details such as the person against whom the complaint is made or the premises where the alleged offence is committed. If the trademark in question is not identical to a registered trademark, the registered proprietor or licensee must obtain the Registrar’s verification.
The Public Prosecutor has the discretion whether should be prosecuted, based on what is found during the investigation stage.
Copyright infringement – a fine of not less than RM2,000 and not more than RM20,000 for each infringing copy, or to imprisonment for up to 5 years or to both and for any subsequent offence, to a fine of not less than RM4,000 and not more than RM40,000 for each infringing copy or to imprisonment for a term not exceeding 10 years or to both.
What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
Civil proceedings: Possible reliefs include injunctions, damages, search and seizure orders, account of profits and statutory damages (patents, utility innovations, trademarks, geographical indications, copyright, industrial designs).
What is the length and cost of such procedures?
Civil proceedings may take between 9 – 12 months. The costs of full trial may range from RM80,000 to RM500,000 depending on subject matter and complexity.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
The High Court has jurisdiction. Nature of the dispute will determine if the dispute is to be by way of a Writ or Originating Summons.
Writ: Witness testimony through trial.
Originating Summons: affidavit evidence only.
Time to judgment is approximately 9-12 months.
Reliefs available depend on the subject matter and generally includes damages, injunctions and costs. Appeal is possible to the Court of Appeal and finally to the Federal Court.
The TMA 2019 codifies the remedies available to a plaintiff in an infringement action as follows:
- Mandatory or restraining injunctions;
- An account of profit;
- Additional damages, in an appropriate case, where infringement involves a counterfeit trademark;
- Order for erasure;
- Order for delivery up of infringing goods, materials or articles; or
- Order for disposal of infringing goods, material or articles.
A successful plaintiff in an infringement action may now be awarded both damages and an account of profits (attributable to the infringement that have not been taken into account in computing the damages).
What customs procedures are available to stop the import and/or export of infringing goods?
Trademark counterfeiting activities can be combated at the borders of the country through the seizure and detainment of counterfeit goods, which involves both the Registrar of Trademarks and Malaysian Customs authorities, which is conducted upon application by the registered proprietor or his agent to the Registrar. Border measures do not apply to unregistered trademarks.
Part XIII TMA 2019 specifically provides for border measures.
- A registered proprietor or licensee may file an application with the Registrar if he believes that infringing goods are to be imported.
- The Registrar will notify the applicant whether his application has been approved. If it has, the applicant must pay a security deposit with the Registrar.
- The Registrar will notify authorised officers of the particulars of the application, who will then prohibit importation of the infringing goods identified in the application. Any such goods will be seized and detained.
Following seizure, the authorised officer will notify the Registrar, importer, and applicant of the seizure and specify a period within which the applicant must institute an action for infringement, failing which the infringing goods will be released to the importer.
The enforcement bodies such as the police and the Ministry of Domestic Trade, Cooperative and Consumerism have been granted with wide enforcement powers. They have been granted with the power to enter any premises where there is reasonable cause to suspect that there are infringing goods or equipment for making such goods or equipment for making such goods, and to seize such goods or equipment with a warrant. Seizures can be effected without a warrant if there are reasonable grounds to believe that the infringing goods or equipment may be destroyed or removed from the premises due to a delay in obtaining a warrant. The Copyright (Amendment) Act 2012 has extended the right of the police to gain access to computerised or digitalised data when carrying out investigations.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
There is no mandatory system in relation to non-court enforcement options or dispute resolution mechanisms to be elected for IP disputes.
What options are available to settle intellectual property disputes?
Parties may settle IP disputes by going to Court or referring their disputes to arbitration. There is also an option for mediation mediation by the Court, which may be explored by parties. Recent trends suggests that the Court are inclined to order for parties to attempt mediation before fixing the matter for trial.
What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
Infringement of a patent involves the exploitation of a patented invention by a person other than the owner of the patent and without the agreement of the owner in relation to a product or a process falling within the scope of protection of the patent. The exploitation refers to any of the following acts:
- Making, importing, offering for sale, selling, using the product or stocking such product for the purpose of offering for sale, selling or using when the patent has been granted in respect of a product;
- Using the process or doing any of the acts referred above in respect of a product obtained directly by means of the process when the patent has been granted in respect of a process.
Infringement of a certificate for a utility innovation involves the exploitation of the utility innovation by a person other than the owner of the certificate and without the agreement of the owner in relation to a product or a process falling within the scope of protection of the utility innovation. The exploitation means any of the following acts:
- Making, importing, offering for sale, selling, using the product or stocking such product for the purpose of offering for sale, selling or using when the certificate has been granted in respect of a product;
- Using the process or doing any of the acts referred above in respect of a product obtained directly by means of the process when the certificate has been granted in respect of a process.
There is a breach of confidence where the following three elements is established by the plaintiff to the satisfaction of the court:
- The information which the plaintiff is seeking to protect is of a confidential nature
- The information in question was communicated in circumstances importing an obligation of confidence; and
- There must be an unauthorised use of that information to the detriment of the party who communicated it.
The TMA 2019 provides for acts amounting to infringement of registered trademark as follows:
- A person who uses a sign which is identical with the trademark in relation to goods or services which are identical with those for which it is registered, in the course of trade, without the consent of the registered proprietor:
- A person who, without the consent of the registered proprietor of the trademark uses in the course of trade a sign:
- That is identical with the trademark and is used in relation to goods or services similar to those for which the trademark is registered; or
- That is similar to the trademark and is used in relation to goods or services identical or similar to those for which the trademark is registered
resulting in the likelihood of confusion on the part of the public.
The unlawful use in the course of trade which can give rise to institution of proceedings in court for an injunction to prevent unlawful use of a protectable geographical indication includes:
- The use of any means in the designation or presentation of any goods that indicates or suggests, in a manner which mislead the public, that the goods in question originate in a geographical area other than the true place of origin.
- Any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention.
- Any use of a geographical indication which, although literally true as to the geographical origin of the goods, falsely represents to the public that the goods originate in another country, territory, region or locality or
- Any use of a geographical indication identifying wines or sprits not originating in the place indicated by that geographical indication, even where the true origin of the wines or spirits is indicated or the geographical indication is accompanied by expressions such as ‘kind’, ‘type’, ‘style’ or ‘imitation’.
Copyright is infringed by a person who, without the consent or licence of the owner of the copyright, imports an article into Malaysia for the purpose of:
- selling, letting for hire, or by way of trade offering or exposing for sale or hire the article;
- distributing the article for the purpose of trade or for any other purpose to an extent that it will affect prejudicially the owner of copyright;
- by way of trade, exhibiting the article in public
where he knows or ought reasonably to know that the making of the article was carried out without the consent or licence of the owner of the copyright.
A person infringes the rights conferred by the registration of an industrial design if he, without licence or consent of the owner of the industrial design:
- applies the industrial design or any fraudulent or obvious imitation of it to any article in respect of which the industrial design is registered;
- imports into Malaysia for sale, or for use for the purposes of any trade or business any article to which the industrial design or any fraudulent or obvious imitation of it has been applied outside Malaysia without the licence or consent of the owner; or
sells, or offers or keeps for sale, or hires or offers or keeps for hire any of the articles as described above while the registration is still in force.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular 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? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
While there is a Court in Kuala Lumpur to hear IP matters, there may not be any special technical training provided to the Judge. Experts may be appointed by the Court or parties. As Malaysia adopts the adversarial system, it is the burden of both parties to present all the facts they intend to rely on.
The Malaysian Court system provides for discovery applications to be made.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
Writ: Evidence tendered through witnesses and is open to cross examination. It is employed in every case.
Originating Summons: the Court will look at affidavit evidence and rebuttals.
What defences to infringement are available?
The most common defence to patent infringement is that the patent is invalid on the following grounds:
- The patent is not novel, does not contain an inventive step or the patent is not industrially applicable;
- The description or the claim of the patent is insufficient to be deemed clear and concise and fully supported by the description;
- That any drawings which are necessary for the understanding of the claimed invention have not been furnished;
- That the right to the patent does not belong to the person to whom the patent was granted; or
- That incomplete or incorrect information has been deliberately provided or caused to be provided to the Registrar.
It is noteworthy that in the landmark case of Merck Sharp & Dohme Corp & Anor v Hovid Berhad  9 CLJ 1, the Federal Court overruled its earlier decision in SKB Shutters Manufacturing Sdn Bhd v. Seng Kong Shutter Industries Sdn Bhd  9 CLJ 405. In said landmark decision, the Federal Court held that a dependent claim is no longer invalid merely on the finding that the claim that it is dependent upon is held to be invalid. Instead, the Court is required to assess each claim individually.
Other defences to patent infringement include:
- Monopoly rights of a patentee are confined to activities which are carried out for industrial or commercial purposes only and in particular not to acts done only for scientific research;
- Patent owners cannot control acts which are carried out in order to make, use, offer to sell or sell a patented invention solely for uses reasonably related to the development and submission of information to the relevant authority which regulates the manufacture, use or sale of drugs;
- A patentee or any third party who has his consent, who has placed patented products into circulation for the first time in the marketplace cannot thereafter utilise his exclusive rights as a patentee to control subsequent dealings with the products.
- Where the infringing act has been committed with the conditional or unconditional consent of the patent owner or his licensee.
- The rights of a patentee do not extend to the use of the patented invention on any foreign vessel, aircraft, spacecraft or land vehicle temporarily in Malaysia.
- No infringement proceedings can be taken where the patent has lapsed and has not been reinstated.
- Where the act is done pursuant to a compulsory licence.
- Where the exploitation is committed by the Government or any person authorised by the Government.
- Where a person, at the priority date of the patent application, has used the patented product or process in good faith.
- A purchaser of a patented article has an implied licence to repair it as long as the repair does not amount to the making of a new article.
Similar to patents, the most common defence to utility innovation infringement is invalidation. The grounds to invalidate a utility innovation are similar to the grounds to invalidate a patent, except for lack of inventive step. Reason being inventive step is not a requirement for a certificate for a utility innovation.
Other defence to utility innovation infringement include:
- Monopoly rights of a certificate owner are confined to activities which are carried out for industrial or commercial purposes only and in particular not to acts done only for scientific research;
- Certificate owners cannot control acts which are carried out in order to make, use, offer to sell or sell a utility innovation for which a certificate has been granted solely for uses reasonably related to the development and submission of information to the relevant authority which regulates the manufacture, use or sale of drugs;
- A certificate owner or any third party who has his consent, who has placed the certificated products into circulation for the first time in the marketplace cannot thereafter utilise his exclusive rights as a certificate owner to control subsequent dealings with the products.
- Where the infringing act has been committed with the conditional or unconditional consent of the owner.
- The rights of an owner do not extend to the use of the utility innovation on any foreign vessel, aircraft, spacecraft or land vehicle temporarily in Malaysia.
- No infringement proceedings can be taken where the certificate for a utility innovation has lapsed and has not been reinstated.
- Where the exploitation is committed by the Government or any person authorised by the Government.
- Where a person, at the priority date of the application for a certificate for a utility, has used the protected product or process in good faith.
- A purchaser of an article for which a certificate has been granted has an implied licence to repair it as long as the repair does not amount to the making of a new article.
In the recent case of Emerico Sdn Bhd v Maxvigo Solution Sdn Bhd  1 LNS 206, the Defendant in that case attempted to move the Court to invalidate a granted utility innovation on the grounds of procedural non-compliance (which is not provided under Section 56 of the PA. The High Court agreed with the submission for the Plaintiff and held that the grounds to invalidate a patent or utility innovation are as provided under Section 56 of the PA and the Defendant cannot rely on other grounds not provided in that provision.
The common defence:
- The information is not confidential but is common knowledge
- The information claimed to be confidential is not clearly identified
- There is just cause or excuse for the disclosure
The TMA 2019 provides for the defences against infringement:
- the use in good faith by a person of his own name, or the name of his or his predecessor’s business;
- the use in good faith a sign to indicate the kind, quality, quantity, intended purposes, value, geographical origin or other characters of the goods or services in accordance with honest practices in industrial or commercial matters;
- the use in good faith a sign to indicate the time of production of goods or the rendering of the services in accordance with honest practices in industrial or commercial matters;
- the use in good faith by a person to indicate the intended purpose of goods including accessories or spare parts or service in accordance with honest practices in industrial or commercial matters;
- the owner or his predecessors in business have continuously used his mark from a date before the use of the registered trademark by the registered proprietor, his predecessor in business, or a registered user of the mark or before registration of the trademark, whichever is earlier;
- a person uses a trademark in relation to goods or services where the registered proprietor or registered user has expressly or impliedly consented to;
- the use for a non-commercial purpose;
- the use for the purpose of news reporting or news commentary;
- the use of a trademark, which is one of two or more registered trademarks which are substantially identical, in the exercise of the right to the use of that trademark given by registration; and
- the registered trademark is used by concurrent proprietors.
Institution of court proceedings for unlawful use of geographical indications can only be instituted by ‘an interested person’ as defined under the GIA, such as individual consumers of goods bearing a false or misleading geographical indication.
It is not copyright infringement where:
- Acts restricted by copyright is done by way of fair dealing including for purposes of research, private study, criticism, review or the reporting of news or current events;
- Incidental inclusion of a copyright work in an artistic work, sound recording, film or broadcast and their reproduction and distribution of copies situated in a place where it can be viewed by the public;
- Private recording of broadcasts or any of its copyrighted work to be watched later;
- If the use of the copyright work is made by way of illustration for teaching purposes and is compatible with fair practice;
- any use of a work for the purpose of an examination by way of setting the questions, communicating the questions to the candidates or answering the questions or a reproduction of a work included in a broadcast intended for educational institutions;
- Use made of a work by or under the direction or control of the Government, provided certain conditions are satisfied;
- Any use of a work for the purposes of any judicial proceedings, a legislative body or for the purpose of the giving professional advice by a legal practitioner;
- Certain uses in relation to computer programs;
- The infringing act is done by way of parody, pastiche or caricature;
- Reading or recitation in public or in a broadcast by a person of any reasonable extract from a published literary work if accompanied by sufficient acknowledgement;
- The making and issuing of copies of any work into a format to cater for the special needs of people who are visually or hearing impaired and the issuing of such copies to the public by non-profit making bodies or institutions;
- the performance, showing or playing of a work by a non-profit making club or institution for charitable or educational purpose with no admission fee;
- Reproduction of work by broadcasting service intended exclusively for lawful broadcasting;
- the making of quotations from a published work if they are compatible with fair practice, reproduction of articles on current topics or for informatory purposes;
- The making of a transient and incidental electronic copy of a work made available on a network where such copy is required for the viewing, listening or utilisation of the work.
Similar to patents and utility innovations, the most common defence for industrial design infringement is invalidation. An industrial design may be revoked where it was not new at the priority date of the application for registration and where it is contrary to public order or morality. It may be cancelled where the registration has been procured by unlawful means.
Who can challenge each of the intellectual property rights described above?
Generally, an aggrieved person may make an application to the Court to revoke the IP rights described in section A.
“a person aggrieved is a person who has used his mark as a trade mark- or who has a genuine and present intention to use his mark as a trade mark- in the course of a trade which is the same or similar to the trade of the owner of the registered trade mark that the person wants to have removed from the register.”
The same principles above may apply with regards to other intellectual property rights. Only a person with a genuine and present intention to use the IP may make an application to revoke a previously granted IP right. For instance in the case of Tan Yock Kuan & Anor v Cew Sin Plastics Pipe Sdn Bhd  1 LNS 681, the High Court held that the Defendant was “aggrieved” because the Plaintiff by way of the original action has applied for relief against the Defendant for infringement of the utility innovation.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
There are various types of challenges to intellectual property rights and the challenges may be mounted at different periods in time. The most common challenge to an existing intellectual property right is when an action for infringement is brought against a defendant.
Patents & Utility Innovation:
Invalidation proceedings: In an infringement action, the defendant can challenge, in the same action, the validity of the patent/ the certificate for utility innovation. The validity of a patent/ the certificate for utility innovation may also be put in issue in proceedings for a declaration of non-infringement.
In an action for infringement of a trademark, it is common for the defendant to counterclaim with an application for cancellation, which can be an action on its own or as a counterclaim.
Any interested person as specified under the GIA may request the Registrar to cancel or rectify the registration of a geographical indication.
The defendant can argue on the subsistence of copyright.
Application to rectify the Register by including, making, expunging or varying any entry in the Register or correcting any error or defect in the Register as it deems fit must be made by an aggrieved person or interested party.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
The forum for challenging these intellectual property rights is in Court.
The grounds for a finding of invalidity of each of these intellectual property rights are:
- The invention did not meet the patentability requirements, it is not an invention within the meaning of the PA or is a non-patentable invention or is against public order or morality or prohibited by law or fails to comply with the requirements under the PA;
- The description or the claim does not comply with the requirements of the Patents Regulations 1986;
- The drawings which are necessary for the understanding of the claimed invention have not been furnished;
- The right to the patent does not belong to the person to whom the patent was granted;
- The information that was provided to the Registrar under s 29(4) was deliberately incomplete or incorrect.
- The utility innovation is not an utility innovation within the meaning of the PA read together with the Second Schedule of the PA or is not eligible for a certificate for a utility innovation or is against public order or morality or prohibited by law or fails to comply with the requirements under the PA read together with the Second Schedule of the PA;
- The description or the claim does not comply with the requirements of the respective regulations prescribed;
- that any drawings which are necessary for the understanding of the claimed innovation have not been furnished;
- The right to the certificate of utility innovation does not belong to the person to whom the certificate of utility innovation was granted;
- The information that was provided to the Registrar under s 29(4) was deliberately incomplete or incorrect.
That the information does not possess the degree of confidentiality as required, or if the information is trivial in nature and available in the public domain.
Revocation by Court
The Court may revoke a registration upon application by an aggrieved person:
- where the trademark has not been used in good faith within a period of three years following its registration, and there are no proper reasons for non-use;
- where the use of the goods or services for which the trademark is registered has been suspended for three years, and there are no proper reasons for non-use;
- where the trademark has become diluted in the market because of acts of inactivity; or
- where the trademark is liable to mislead the public, including in respect of the nature, quality or geographical origin of the goods or services for which it is registered.
Invalidation by Court
The Court may invalidate a registration upon application by an aggrieved person on the ground that the registered trademark was registered in breach of section 23 (i.e. absolute grounds for refusal).
Cancellation on the ground that the geographical indication is excluded from protection such as:
- the geographical indication not corresponding to the meaning of ‘geographical indication’ as defined in the GIA;
- the geographical indication is contrary to public order or morality;
- the geographical indication which are not or have ceased to be protected in their country or territory of origin; or
- the geographical indications which have fallen into disuse in their country or territory of origin.
The rectification of the registration of a geographical indication on the following grounds:
- That the geographical area specified in the registration does not correspond to the geographical indication;
- That the indication of the products for which the geographical indication is used or the indication of the quality, reputation or other characteristic of such products is missing or unsatisfactory.
That the work is not original or there is no copyright.
An industrial design may be revoked where it was not new at the priority date of the application for registration and where it is contrary to public order or morality. It may be cancelled where the registration has been procured by unlawful means
Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
Any interested person can request by instituting proceedings against the owner of the patent that the Court declare that the performance of a specific act does not constitute an infringement of the patent, which when proven, the Court shall grant the declaration of non-infringement.
A compulsory licence allows third parties other than the patentee to exploit the patent in a number of situations. There are three types of compulsory licences:
- Compulsory licences which are granted due to the act or inaction of the patent owner that is against public interest;
- Compulsory licences which are granted on the basis of inter-dependence of patents and
- Compulsory use of the patent by the Government.
Any person may apply to the court for the grant of a compulsory licence in respect of an industrial design on the ground that the industrial design is not applied in Malaysia by any industrial process or means to the article in respect of which it is registered to such an extent as is reasonable in the circumstances of the case. The court may make such order on the application as it considers just.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?
Special damages, general damages, injunctions, account of profits, costs (partial), exemplary damages, statutory damages, declaration, an order for delivery up or obliteration (if applicable).
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
There are no fixed costs. The costs would depend on the type and manner of enforcement. Costs are generally awarded to the winning party but this is at the discretion of the Court. Costs awarded is relatively low.
A defendant in any action may apply for security of costs. This would be the discretion of the Court.
Has the COVID-19 pandemic caused any changes (temporary or permanent) to the protection or enforcement of intellectual property? For example, changes to deadlines, filing or evidence requirements or court processes.
Due to the COVID-19 pandemic and outbreak in Malaysia, the Government of Malaysia has declared a Movement Control Order (from 18.3.2020 to 12.5.2020) (“MCO”), Conditional Movement Control Order (from 13.5.2020 to 9.6.2020) (“CMCO”) and now, the Recovery Movement Control Order (from 10.6.2020 to 31.8.2020) (“RMCO”).
In compliance with the MCO and CMCO, the IPCM was not open and only reopened in stages on 20.5.2020.
Deadlines that fall due during the MCO and CMCO for patents, utility innovations, trademarks and industrial designs were automatically extended to 16.6.2020.
For patents and utility innovations that intend to venture into other Patent Cooperation Treaty (“PCT”) and/or Paris Convention for the Protection of Industrial Property (“Paris Convention”) countries, Rule 80.5(i) of the Regulations under the PCT and Article 4C(3) of the Paris Convention provides that the international deadlines under the PCT or Paris Convention that falls during the MCO and CMCO period is automatically extended to the next subsequent day on which IPCM (acting as Receiving Office) is open for business.