Malaysia: Intellectual Property

1. Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how);Patent, which is invention that is new, involves an inventive step and is industrially applicable. Invention may be or may relate to a product or process.Utility innovation, which is any innovation that creates a new product or process, or any new improvement of a known product or process, which is capable of industrial application, and includes an invention.

   Trade secrets, confidential information, know-how. In Malaysia, protection is given to owner of information or document which is of a confidential nature. What is confidential is a question of fact in each case. Considerations which courts have found to be relevant, in particular cases, in determining this question include: (a) the fact that skill and effort was expended to acquire the information; (b) the fact that the information is jealously guarded by the employer, is not readily made available to employees and could not, without considerable effort and/or risk, be acquired by others; (c) the fact that it was plainly made known to the employee that the material was regarded by the employer as confidential; (d) the fact that the usages and practices of the industry support the assertion of confidentiality; and (e) the fact that the employee in question has been permitted to share the information only by reason of his or her seniority or high responsibility within the employer’s organisation. What constitutes confidential information and trade secret varies from industry to industry.

   Once information enters the public domain, it is not confidential. Similarly, there is no duty of confidence with regard to useless or trivial information.

   Right to privacy, which is the right sand liberties to be let alone, the right of a person to be free from unwarranted publicity and the right to live without undue interference by the government or any private individual in matters with which the public is not concerned. It is a multi dimensional concept recognised in Malaysia. In this modern society, right to privacy has been recognised both in the eye of law and in common parlance. The right to privacy refers to the specific right of an individual to control the collection, use and disclosure of personal information. Personal information could be in the form of personal interests, habits and activities, family records, education records, communication [including mail and telephone] records, medical records, to name a few. An individual could easily be harmed by the existence of computerised data about him/her which is inaccurate or misleading and which could be transferred for an unauthorised third party at high speed at very little cost. Innovative technologies make personal data easily accessible and communicable and there is inherent conflict between right to privacy and data protection.

   Personal data which relates to any information in respect of commercial transactions, which- (a) is being processed wholly or partly by means of equipment operating automatically in response to instructions given for that purpose; (b) is recorded with the intention that it should wholly or partly be processed by means of such equipment; or (c) is recorded as part of a relevant filing system or with the intention that it should form part of a relevant filing system, that relates directly or indirectly to a data subject, who is identified or identifiable from that information or from that and other information in the possession of a data user, including any sensitive personal data and expression of opinion about the data subject.

2. 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)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. Trademark includes collective mark or certification mark. A “sign” may constitute a trademark even though it is used in relation to a service ancillary to the trade or business of an undertaking and whether or not the service is provided for money or money’s worth. “Sign” includes both conventional mark and non-conventional mark, namely any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion or any combination thereof.Goodwill, or reputation attached to goods or services or business (goodwill or reputation) which is well protected under the jurisprudence of common law through the tort of passing off.

   Anti-competition where horizontal or vertical agreement between enterprises is prohibited insofar as the agreement has the object or effect of significantly preventing, restricting or distorting competition in any market for goods or services.

   Geographical indication that is an indication which may contain one or more words which identifies any goods as originating in a country or territory, or a region or locality in that country or territory, where a given quality, reputation or other characteristic of the goods is essentially attributable to its geographical origin.

3. 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).Copyright, which protects (a) literary works; (b) musical works; (c) artistic works; (d) films; (e) sound recordings; and (f) broadcasts. Works shall be protected irrespective of their quality and the purpose for which they were created. However, copyright protection shall not extend to any idea, procedure, method of operation or mathematical concept as such.Registered industrial design, which is an industrial design registered under the Malaysian Industrial Design Act 1996. Industrial design refers to features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged by the eye, but does not include- (a) a method or principle of construction; or (b) features of shape or configuration of an article which- (i) are dictated solely by the function which the article has to perform; or (ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.

Patents: The duration of a patent, upon registration, shall be for 20 years from the date of filing of the application (section 35 of the  Patents Act 1983 (“PA”)). An annual renewal fee must be paid to keep the patent in force.

The proceedings for patent infringement may not be instituted after 6 years from the act of infringement.

Utility Innovations: 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 (PA read together with the Second Schedule of the PA). An annual renewal fee must be paid to keep the utility innovation in force.

The proceedings for utility innovation infringement may not be instituted after 5 years from the act of infringement.

Trade secrets, confidential information and know-how: Common law protection. Duration of protection is potentially perpetual for so long as the information, documents and trade secrets or know-how remain confidential and secret: Vision Cast Sdn Bhd & Anor v. Dynacast (Melaka) Sdn Bhd & Ors [2014] 8 CLJ 884.

Trademarks:  The duration of a registered trademark is for 10 years and is renewable every ten years indefinitely (section 39 of the Trademarks Act 2019 (“TMA 2019”). In a case of unrenewed trademark where- (a) the registration of trademark is not renewed; or (b) the registration of trademark has been deemed removed and has not been restored, a person other than the person who was registered as the proprietor of the unrenewed trademark may apply for the registration of trademark (section 40(1) TMA 2019). Further, an action for infringement may not be instituted in respect of an act that was done after the registration of trademark has expired or has been deemed removed and before it was renewed or restored (section 57 of TMA 2019).

Personal data processed for any purpose shall not be kept longer than is necessary for the fulfilment of that purpose (section 10(1) of the Personal Data Protection Act 2010).

Geographical indications: The registration of a geographical indication shall be for a period of 10 years from the date of registration. The registration of the geographical indication may be renewed for further periods of 10 years in respect of each renewal (sections 18 and 19 of Geographical Indications Act 2022).

Copyright:  Copyright Act 1987 (“CA 1987”) provides for the duration of copyright which depends on the type of work.

Literary, musical or artistic work: during the life of the author and shall continue to subsist until the expiry of a period of 50 years after his death. in the case of a work of joint authorship, “life of the author” shall be construed as a reference to the author who dies last.

Literary, musical or artistic work (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.

Literary, musical or artistic work (published anonymously or under a pseudonym): 50 years computed from the beginning of the calendar year next following the year in which the work was first published or first made available to the public or made, whichever is the latest.

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.

Rights in a performance/ performer’s rights: 50 years computed from the beginning of the calendar year next following the year in which the performance was given or was fixed in a sound recording.

Right to equitable remuneration: from the time the sound recording is published until the expiry of a period of 50 years computed from the beginning of the calendar year next following the year of publication or, if the sound recording has not been published, from the time of fixation of the sound recording until the expiry of a period of 50 years computed from the beginning of the calendar year next following the year of the fixation.

Industrial designs:  The registration of an industrial design shall, upon registration, subsist for 5 years from the filing date of the application for the registration of the industrial design. The period of registration of an industrial design may be extended for 4 further consecutive terms of 5 years each, if an application for extension is made in the prescribed form, and the prescribed extension fee is paid before the expiration of the current term (section 25 of the Industrial Designs Act 1996 (“IDA”)).

The proceedings for registered industrial designs infringement may not be instituted after 5 years from the act of infringement (section 33(3) IDA).

Patents/ Utility Innovation:

In the absence of any provisions to the contrary in any contract of employment or for the execution of work, the rights to a patent for an invention made in the performance of such contract of employment or in the execution of such work shall be deemed to accrue to the employer, or the person who commissioned the work.

Notwithstanding the above, where the invention acquires an economic value much greater than the parties could reasonably have foreseen at the time of concluding the contract of employment or for the execution of work, as the case may be, the inventor shall be entitled to equitable remuneration which may be fixed by the Court in the absence of agreement between the parties.

Where an employee whose contract of employment does not require him to engage in any inventive activity makes, in the field of activities of his employer, an invention using data or means placed at his disposal by his employer, the right to the patent for such invention shall be deemed to accrue to the employer, in the absence or any provision to the contrary in the contract of employment.

The employee shall be entitled to equitable remuneration which, in the absence of agreement between the parties, may be fixed by the Court taking into account his emoluments, the economic value of the invention and any benefit derived from it by the employer.

The rights conferred on the inventor shall not be restricted by contract.

The person whose name is recorded in the Register of Patents as the grantee of a patent/ utility innovation.

Trademark:

The first user of the trademark in the course of trade is the common law owner or proprietor of a trademark.

Geographical indications:

Any person who is carrying on an activity as a producer in the geographical area with respect to the goods and includes an association of such persons; or a competent authority may file an application for registration of a geographical indication of any goods.

Copyright:

Copyright shall vest initially in the author.

Where a work- (a) is commissioned by a person who is not the author’s employer under a contract of service or apprenticeship; or (b) not having been so commissioned, is made in the course of the author’s employment, the copyright shall be deemed to be transferred to the person who commissioned the work or the author’s employer, subject to any agreement between the parties excluding or limiting such transfer.

Industrial designs:

The author of an industrial design shall be treated as the original owner of the industrial design.

Where an industrial design is created in pursuance of a commission for money or money’s worth, the person commissioning the industrial design shall, subject to any contrary agreement between the parties, be treated as the original owner of the industrial design.

Similarly, where an industrial design is created by an employee in the course of his employment, his employer shall, subject to any contrary agreement between the parties, be treated as the original owner of the industrial design.

The owner of Patent, Utility Innovation, Trademark, Geographical Indication and Industrial Design may apply for registration of their rights in Intellectual Property Corporation of Malaysia.

Whilst owner for Trademarks may apply for registration of the Trademarks, nothing in Trademarks Act 2019 shall be deemed to affect the right of action against any person for passing off goods or services as those of another person or the remedies in respect of the goods or services.

Whilst copyright is not a “registered right” per se (as a copyright subsist, (1) if the work is one of the categories of work which is recognised under the Copyright Act 1987 (“CA 1987”), the work is original; and (3) the work is reduced into material form), there is a voluntary notification procedure available under the CA 1987 and its subsidiary legislation. A copyright owner may file a notification of the works, supported by a statutory declaration exhibiting the work at the Register of Copyright (“Register”). If the notification is in order, the Controller shall issue a letter to the Applicant stating that the notification of copyright has been entered into the Register. The Controller or Deputy Controller may certify true extracts from the Register which shall be prima facie evidence of the particulars entered therein and such certified extracts of the Register shall be admissible in all Courts. As such, it is prudent for copyright owners to take advantage of the voluntary notification procedure, which be of assistance in the event of a dispute.

Patent/ Utility Innovation

Who: Any person may make an application for a patent either alone or jointly with another.

What: An invention is patentable if it is new, involves an inventive step and is industrially applicable.

An utility innovation is an innovation which creates a new product or process, or any new improvement of a known product or process, which is capable of industrial application, and includes an invention.

How: Brief summary of the procedure for registration of patent

Expedited examination process is available in Malaysia. An applicant who requests or has requested for substantive examination may request the Registrar to undertake an expedited examination of the application once it has been made available for public inspection.

Trademarks

Who: 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.

What: Any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings

How: Brief summary of the procedure for registration of Trademark

Any person aggrieved by the decision of the Registrar in relation to the above matters may appeal to the High Court.

An applicant for the registration of trademark may, except for collective mark, certification mark and sign which are colour, sound, scent, hologram, positioning or sequence of motion, request the Registrar for an expedited examination.

Voluntary notification of copyright

Who: Owner of the copyright in the work or an assignee of the copyright

What: (a) literary works; (b) musical works; (c) artistic works; (d) films; (e) sound recordings; and (f) broadcasts.

How: Brief summary for voluntary notification of copyright

Application filed → Copyright work recorded → Certificate issued

Industrial Design

Who: The original owner of an industrial design.

What: Features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged by the eye, but does not include- (a) a method or principle of construction; or (b) features of shape or configuration of an article which- (i) are dictated solely by the function which the article has to perform; or (ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.

How: Brief summary for industrial design registration

Any person aggrieved by any decision or order of the Registrar may appeal to the Court.

Geographical indication

Who: Any person who is carrying on an activity as a producer in the geographical area with respect to the goods and includes an association of such persons; or a competent authority.

What: An indication which may contain one or more words which identifies any goods as originating in a country or territory, or a region or locality in that country or territory, where a given quality, reputation or other characteristic of the goods is essentially attributable to its geographical origin.

How: Brief summary for geographical indication registration

File application -> Formality examination to see compliance with statutory requirement -> Amendment in the event of non-compliance -> Advertised for opposition -> Registration

Patents & Utility Innovations:

3 years or more.

(Expedited examination process is available)

Trademarks:

12 to 18 months

(Expedited examination process is available)

Industrial Designs:

6 to 8 months

Voluntary notification of copyright:

2 to 3 months

Geographical Indications:

6 to 9 months

Patents:

Yes, third party observation process is newly implemented. Pursuant to Patents (Amendment) Act 2022 (Act A1649), there will be a new provision, i.e. section 55A which allows for opposition of patent. However, this provision is not in force as yet

Trademarks:

Yes, during the opposition stage.

Industrial Designs:

N/A

Geographical Indications:

Yes, during the opposition stage

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 – 3 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: section 88 (1) of the Patents Act 1986 (“PA 1986”). The procedures of appeal shall be made in accordance with the rules of court in civil matters: section 88(2) of the PA 1986.

Subsequently, any person aggrieved by the decision or order of the High Court may appeal to the Court of Appeal, and possibly with the leave of the Federal Court, to appeal to the Federal Court.

Trademarks:

Upon issuance of a provisional refusal, whether during the Formality Examination Stage or Substantive Examination, the Applicant may appeal to IPCM.

If the application for registration of trademark does not fulfill any requirements for registration of trademark, the Registrar shall inform the grounds of provisional refusal to the applicant by a written notice and the applicant shall have an opportunity to – (1) make representations; (2) amend the application so as to meet the conditions, amendments, modifications or limitations, as the Registrar deems fit to impose; or (3) furnish additional or any other information or evidence, within such period as the Registrar may specify in the written notice.

The application shall be deemed withdrawn if the applicant does not respond within such period as specified by the Registrar in the written notice.

The Registrar shall refuse the application if the applicant’s response does not satisfy the Registrar that those requirements are fulfilled and the Registrar shall, if required by the applicant, state in writing the grounds of the total provisional refusal.

Any person aggrieved by the decision of the Registrar in relation to the following matters may appeal to the High Court.

Where an appeal lies to the Court against the decision of the Registrar relating to a total provisional refusal – (1) the Court shall, where necessary, hear the applicant and the Registrar; and (2) the appeal shall be heard on the material stated by the Registrar to have been used by the Registrar in arriving at his decision and no further grounds of provisional refusal to the acceptance of the application shall be allowed to be taken by the Registrar other than those so stated except by leave of the Court.

Industrial Designs:

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.

Any person aggrieved by any decision or order of the Registrar may appeal to the High Court.

Geographical Indications:

If the application for the registration of the geographical indication made by the applicant does not fulfil any of the requirements for registration of a geographical indication, the Registrar shall inform the applicant of the grounds of provisional refusal by a written notice and give the applicant an opportunity, within such period as the Registrar may specify in the written notice, to— (1) make a representation by way of a written submission or hearing; (2) amend the application for registration of the geographical indication to meet any condition, amendment, modification or limitation as the Registrar thinks fit to impose; or (3) furnish additional or any other information or evidence.

Where  the applicant does not respond to the Registrar within such period as specified in the written notice, the application for the registration of the geographical indication shall be deemed to be withdrawn.

Where the response given by the applicant does not satisfy the Registrar, the Registrar shall refuse the application for the registration of the geographical indication, and upon an application made by the applicant in the form as determined by the Registrar together with payment of the prescribed fee, state in writing the grounds of the refusal.

Upon examination, where the Registrar finds that the application for the registration of the geographical indication fulfils the requirements for registration of a geographical indication, the Registrar shall accept the application for the registration of the geographical indication.

Any person aggrieved by a decision of the Registrar in relation to the following matters may appeal to the High Court.

The Court shall, where necessary, hear the applicant and the Registrar; and the appeal shall be heard on the material as stated by the Registrar to have been used by him in arriving at the decision and no additional ground of refusal to the acceptance of the application for registration of geographical indication shall be allowed to be introduced by the Registrar other than those so stated except by leave of the Court.

Patents and Utility Innovations

Where an owner of a patent or utility innovation intends to keep the same in force, he shall pay the annual fees before the date of expiration during the term of the patent or utility innovation.

However, a period of grace of 6 months shall be allowed after the date of such expiration, upon payment of such surcharge.

If the prescribed annual fee is not paid, the patent shall lapse, and a notice of the lapsing of the patent for non-payment of any annual fee shall be published in the Official Journal.

Within 12 months from the date on which a notice of the lapsing of a patent is published in the Official Journal, (a) the owner of the patent or his successor in title; or (b) any other person who would, if the patent had not lapsed, have been entitled to the patent, may apply to the Registrar in the form as determined by the Registrar together with the payment of the prescribed fee to have the patent reinstated.

Industrial design

The period of registration of an industrial design may be extended for 4 further consecutive terms of 5 years each, if an application for extension is made before the expiration of the current term.

A period of grace of six months from the date on which any unpaid extension fee was due shall be granted for the payment of such extension fee, subject to the payment of such surcharge. Where an application for extension is not made prior to the expiry or during the grace period, the registration shall lapse, and a notice of lapse of the registration shall be published in the Official Journal.

If the owner of a patent or utility innovation or industrial design fails to pay the renewal fees, the patent, utility innovation or industrial design will lapse. However, there is a grace period of six months from the expiry date, wherein the owner has an option to restore the registration, subject to payment of a surcharge.

Within one year from the date on which the notice of lapse of the registration of an industrial design was published in the Official Journal, the owner or his successor-in-title may apply for the restoration of the registration of the industrial design by filing a request for restoration and making payment of surcharge for restoration.

Trademarks

Where the request for renewal is made on or before the date of expiry of the registration, the fee payable shall be the renewal fee as mentioned above.

Where the request for renewal is made within the period of six months after the date of expiry of the registration, the fees payable shall be the renewal fee as mentioned above and a surcharge shall be imposed.

A request for renewal shall be made not later than six months after the date of expiry of the registration.

Renewal shall take effect from the expiry of the previous registration.

If the registration is not renewed mentioned above, the trademark shall be deemed removed.

Where the trademark has been deemed removed, the registered proprietor may request for restoration for his removed registration within six months from the date of removal in the form as determined by the Registrar together with the payment of the restoration fee as prescribed.

If restoration is not applied for under subsection (9) within six months from the date the trademark is deemed removed, the registration shall cease.

The renewal or restoration of the registration of a trademark shall be published in the Intellectual Property Official Journal.

In a case of unrenewed trademark where- (a) the registration of trademark is not renewed; or (b) the registration of trademark has been deemed removed and has not been restored, a person other than the person who was registered as the proprietor of the unrenewed trademark may apply for the registration of trademark.

Geographical Indications

A registered proprietor may, on or before the date of expiry of the registration, renew the registration of a geographical indication.

Renewal may still be filed during the grace period of 6 months after the date of expiry of the registration provided that the payment of surcharge is made.

In the case where the registered proprietor does not renew the registration of the geographical indication after six months of the expiry date of the registration, the geographical indication shall be deemed to be removed.

Where the geographical indication has been deemed to be removed, the registered proprietor may apply for the restoration of the removed registration within six months from the date of the removal together with payment of the prescribed fee.

Deed of assignment, the relevant prescribed form and the requisite filing fees.

Patents

A patent application or patent may be assigned or transmitted in the same way as other personal or moveable property.

Any person becoming entitled by assignment or transmission to a patent application or patent may apply to the Registrar to have such assignment or transmission recorded in the Register.

No such assignment, transmission or security interest transaction shall be recorded in the Register unless- (a) the prescribed fee has been paid to the Registrar; (b) in the case of an assignment, it is in writing signed by or on behalf of the contracting parties.

No such assignment or transmission shall have effect against third parties unless so recorded in the Register.

Trademarks

A registered trademark shall be a personal or moveable property and may be the subject of a security interest in the same way as other personal or moveable property.

A registered trademark shall be transmissible by assignment or transmission in the same way as other personal or moveable property, and shall be so transmissible either in connection with the goodwill of a business or independently.

An assignment or other transmission of a registered trademark may be partial which is limited so as to apply in relation to some but not all of the goods or services for which the trademark is registered.

An assignment of a registered trademark, or an assent relating to a registered trademark, shall not be effective unless it is in writing and is signed by or on behalf of the assignor and assignee, or a personal representative, as the case may be.

The particulars of the assignment shall be entered in the Register on application being made. Until an application has been made and approved by the Registrar, the assignment shall be ineffective against a person acquiring a conflicting interest in or under the registered trademark in ignorance of the transaction.

Similarly, the assignee shall not be entitled to damages or an account of profits 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 made as mentioned above.

Industrial designs

Where a person becomes entitled to- (a) a registered industrial design, or (b) an application for the registration of an industrial design by way of an assignment or transmission or by operation of law, he shall apply to the Registrar in the prescribed manner to record his title or interest in the Register.

The Registrar shall record the particulars of the title or interest referred above in the Register.

No assignment or transmission or operation of law or security interest transaction in respect of a registered industrial design shall have effect against third parties unless recorded in the Register.

Copyrights

Similarly, copyright shall be transferable by assignment, testamentary disposition, or by operation of law, as movable property.

An assignment of copyright may be limited so as to apply only to some of the acts which the owner of the copyright has the exclusive right to control, or to only part of the period of the copyright, or to a specified country or other geographical area.

No assignment of copyright shall have effect unless it is in writing.

An assignment by one copyright owner shall have effect as if the assignment is also granted by his co-owner or co-owners, and subject to any agreement between the co-owners, fees received by any of the owners shall be divided equally between all the co-owners.

An assignment may be effectively granted or made in respect of a future work, or an existing work in which copyright does not yet subsist, and the future copyright in any such work shall be transferable by operation of law as movable property.

Licence must be in writing signed by or on behalf of the contracting parties.

Not mandatory.

Under the Trademarks Act 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.

Patents:

A “licence contract” is defined in the Patents Act 1983 to mean any contract by which the owner of a patent (the “licensor”) grants to another person or enterprise (the “licensee”) a licence to exploit the patented invention.

A licence contract shall be in writing signed by or on behalf of the contracting parties.

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.

Rights of the licensor, and the rights or limitation of the licensee may be clearly provided 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.

Trademarks:

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 inhis 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.

Copyright:

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.

Industrial Designs:

Where an exclusive or non-exclusive licensee intends 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.

Trademarks:

Under the Trademarks Act 2019 (“TMA 2019”), the following infringing acts may amount to a criminal offence:

1. Counterfeiting a trademark;
2. Falsely applying a registered trademark to goods or services;
3. Making or possessing an article which is designed or adapted for making copies of a registered trademark;
4. 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:

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.

Patents, Utility Innovations and Industrial Designs

There are no criminal sanctions for infringement of patents, utility innovations or industrial designs. However, there are certain offences provided under the PA and IDA respectively.

Under the PA, an applicant of a patent or utility innovation has an obligation to file said patent or utility innovation first in Malaysia, unless the applicant obtains a written authority by the Registrar. The failure to comply with this obligation may result in criminal sanctions and if convicted may be liable to a fine not exceeding RM15,000 or to imprisonment for a term not exceeding two years or to both.

Further any person who falsely represents that anything disposed by him for value is a patented product or process; or falsely represent that a patent has been applied for in respect of any article disposed of for value by him, commits an offence and is liable upon conviction to a fine not exceeding RM15,000 or to imprisonment for a term not exceeding two years or to both.

Under the IDA, any person who falsely represents that anything disposed of by him for value is an article protected by an industrial design registration commits an offence and shall be liable on conviction to a fine not exceeding RM15,000 or to imprisonment for a term not exceeding 2 years or to both.

Invocation of Criminal Sanctions

The first step to invoke the criminal procedure as provided under the respective IP statutes is a police report or a report to the relevant ministry i.e. Ministry of Domestic Trade and Consumer Affairs (“MDTCA”). Following from the report to the MDTCA, the investigating team may require the attendance of individuals to give their statements.

From there, the investigating team will prepare an investigation paper, that will be sent to the prosecuting officer who will have the discretion to prefer a charge against the wrongdoer.

Geographical indications

Any person who falsely applies a registered geographical indication or any indication directly or indirectly referring the geographical indication to the goods commits an offence.

Malaysian Courts are proactive in guarding the rightful owners of intellectual property rights (patents, utility innovations, trademarks, copyright, industrial designs, trade secret, confidential information, right of privacy and geographical indications) in respect of their intellectual property rights against infringers.

The owners may enforce their rights against infringer via civil actions:

Possible reliefs include declarations (of infringement and non-infringement), injunctions (permanent injunction or interim injunction), damages, search and seizure orders, account of profits and statutory damages, or in suitable cases for additional damages.

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.

High Court has originating jurisdiction to hear all IP disputes.

Nature of the dispute will determine if the dispute is to be initiated by way of a Writ of Summons or Originating Summons.

Writ of Summons: Where there is substantial dispute as to facts. In this case, the issue of fact will be determined after taking viva voce evidence during trial.

Originating Summons: Where there is unlikely any substantial dispute as to facts. The proceedings will be determined based on affidavit evidence.

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.

For example, the TMA 2019 codifies the remedies available to a plaintiff in an infringement action as follows:

1. Mandatory or restraining injunctions;
2. Damages;
3. An account of profit;
4. Additional damages, in an appropriate case, where infringement involves a counterfeit trademark;
5. Order for erasure;
6. Order for delivery up of infringing goods, materials or articles; or
7. 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).

Trademarks:

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.

Copyright:

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.

There is no mandatory system in relation to non-court enforcement options or dispute resolution mechanisms to be elected for IP 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.

Patents:

Infringement of a patent involves the exploitation of a patented invention by a person other than the owner of the patent and without the consent 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:

1. 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;
2. 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.

Utility Innovation:

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:

1. 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;
2. 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.

Confidential information:

There is a breach of confidence where the following three elements is established by the plaintiff to the satisfaction of the court:

1. The information which the plaintiff is seeking to protect is of a confidential nature
2. The information in question was communicated in circumstances importing an obligation of confidence; and
3. There must be an unauthorised use of that information to the detriment of the party who communicated it.

Trademarks:

The following acts amount to infringement of registered trademark:

1. A person infringes a registered trademark if he uses a sign (in the course of trade, without the consent of the registered proprietor) which is
2. identical with the registered trademark + identical goods or services, or
3. identical with the registered trademark + similar goods or services + resulting in the likelihood of confusion on the part of the public, or
4. similar to the registered trademark + identical/ similar goods or services + resulting in the likelihood of confusion on the part of the public.

Tort of passing off:

In order to prove passing off, the plaintiffs must establish:

1. goodwill or reputation attached to his goods or services (goodwill or reputation);
2. a misrepresentation is done by the defendants (misrepresentation); and
3. he has suffered or likely to suffer a loss due to the defendants’ misrepresentation (damage).

Copyright:

Copyright is infringed by any person who does, or causes any other person to do, without the licence of the owner of the copyright, the following:

1. reproduce in any material form;
2. communicate to the public;
3. perform, show or play to the public;
4. distribute copies to the public by sale or other transfer of ownership; or
5. rent (commercial) to the public, of the whole work or a substantial part thereof, either in its original or derivative form.

Copyright is infringed by any person who, without the consent or licence of the owner of the copyright, imports an article into Malaysia for the purpose of-

1. selling, letting for hire, or by way of trade, offering or exposing for sale or hire, the article;
2. distributing the article- (i) for the purpose of trade; or (ii) for any other purpose to an extent that it will affect prejudicially the owner of the copyright; or
3. 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.

Industrial Designs:

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:

1. applies the industrial design or any fraudulent or obvious imitation of it to any article in respect of which the industrial design is registered;
2. 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
3. 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.

Geographical Indications:

Any interested person of goods identified by a geographical indication may institute Court proceedings against any person for carrying out the following act in relation to the geographical indication:

1. the use in the course of trade of a geographical indication by any means in the designation or presentation of any goods that indicates or suggests, in a manner which misleads the public as to the geographical origin of the goods, that the goods in question originate in a geographical area other than the true place of origin of the goods;
2. any use in the course of trade of a geographical indication which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised or amended from time to time, as specified in the Schedule;
3. any use in the course of trade of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or a geographical indication identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even if the true origin of the wines or spirits is indicated or the geographical indication is used in translation or accompanied by expressions such as “kind”, “type”, “style” or “imitation” or any similar word or expression.

The High Court of Malaya at Kuala Lumpur has a specialised Court who hears all IP disputes.

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.

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.

The following is some of the possible defences. It is not exhaustive.

Patents:

The most common defence to patent infringement is that the patent is invalid on the following grounds:

1. The patent is not novel, does not contain an inventive step or the patent is not industrially applicable;
2. The description or the claim of the patent is insufficient to be deemed clear and concise and fully supported by the description;
3. That any drawings which are necessary for the understanding of the claimed invention have not been furnished;
4. That the right to the patent does not belong to the person to whom the patent was granted; or
5. That incomplete or incorrect information has been deliberately provided or caused to be provided to the Registrar.

Other defences to patent infringement include:

1. 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;
2. 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;
3. 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.
4. Where the infringing act has been committed with the conditional or unconditional consent of the patent owner or his licensee.
5. 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.
6. No infringement proceedings can be taken where the patent has lapsed and has not been reinstated.
7. Where the act is done pursuant to a compulsory licence.
8. Where the exploitation is committed by the Government or any person authorised by the Government.
9. Where a person, at the priority date of the patent application, has used the patented product or process in good faith.
10. 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.

Utility Innovation:

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:

1. 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;
2. 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;
3. 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.
4. Where the infringing act has been committed with the conditional or unconditional consent of the owner.
5. 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.
6. No infringement proceedings can be taken where the certificate for a utility innovation has lapsed and has not been reinstated.
7. Where the exploitation is committed by the Government or any person authorised by the Government.
8. 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.
9. 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 [2020] 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.

Confidential information:

The common defence:

1. The information is not confidential but is common knowledge
2. The information claimed to be confidential is not clearly identified
3. There is just cause or excuse for the disclosure

Trademarks:

The TMA 2019 provides for the defences against infringement:

1. the use in good faith by a person of his own name, or the name of his or his predecessor’s business;
2. 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;
3. 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;
4. 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;
5. 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;
6. a person uses a trademark in relation to goods or services where the registered proprietor or registered user has expressly or impliedly consented to;
7. the use for a non-commercial purpose;
8. the use for the purpose of news reporting or news commentary;
9. 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
10. the registered trademark is used by concurrent proprietors.

Geographical Indications:

The use of a geographical indication—

1. which is contrary to public order or morality in Malaysia;
2. which is not or has ceased to be protected in its country or territory of origin;
3. in relation to any goods or services which is identical with the term customary in the common language as the common name of the goods or services in Malaysia;
4. which is identical with the customary name of a grape variety existing in Malaysia as of 1 January 1995, with respect to products of the vine of that grape variety; or
5. which is not registered under the Geographical Indications Act 2022, and which has fallen into disuse in its country or territory of origin.

No action shall be brought against any person for the use of a trademark which contains or consists of a geographical indication after the expiry of five years— (a) from the date of such use by the person or his predecessor in title has become generally known in Malaysia; or (b) from the date of registration of the trademark by the person under the Trademarks Act 2019, whichever is earlier.

The use by a qualified person of a particular geographical indication of another country identifying wines or spirits in relation to any goods or services if the qualified person has, or he and his predecessor in title have, continuously used that geographical indication in Malaysia in relation to those goods or services or related goods or services either— (a) for at least ten years before 15 April 1994; or (b) in good faith before 15 April 1994.

Copyright:

It is not copyright infringement where:

1. 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;
2. 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;
3. Private recording of broadcasts or any of its copyrighted work to be watched later;
4. If the use of the copyright work is made by way of illustration for teaching purposes and is compatible with fair practice;
5. 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;
6. Use made of a work by or under the direction or control of the Government, provided certain conditions are satisfied;
7. 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;
8. Certain uses in relation to computer programs;
9. The infringing act is done by way of parody, pastiche or caricature;
10. 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;
11. 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;
12. 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;
13. Reproduction of work by broadcasting service intended exclusively for lawful broadcasting;
14. 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;
15. 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.

Industrial Designs

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.

Generally, an aggrieved person may make an application to the Court to revoke the IP rights described in section A.

For example, section 56 of the Patents Act 1983 provides that “any aggrieved person may institute Court proceedings against the owner of the patent for the invalidation of the patent.”

Section 47 of the Trademarks Act 2019 (“TMA 2019”) provides that “the registration of trademark may be declared invalid by the Court upon the application by an aggrieved person on the ground that the trademark was registered in breach of section 23”.

Section 46 of the TMA 2019 provides that “the registration of a trademark may be revoked by the Court on an application by an aggrieved person on any of the grounds” of non-use.

The definition of an “aggrieved person” for trademark matters may be elicited from the case of McLaren International Ltd v. Lim Yat Meen [2009] 4 CLJ 749 where the Federal Court held:

“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 [2019] 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.

Section 24 of the Industrial Designs Act 1996 (“IDA 1996”) enable any person aggrieved to apply to Court for rectification of the Industrial Design Register. Section 27 of the IDA 1996 enable any person may apply to the Court for the revocation of the registration of the industrial design.

Section 23 of the Geographical Indications Act 2022 provides that “the Court may, on the application of any person…, cancel the registration of a geographical indication…”

For some intellectual property rights, it may be challenged during the registration process and/or after the registration.

By way of example, the challenge to the trademark may be mounted after the publication of the Trademark in the IP Journal for opposition.

An aggrieved person may apply to Court at any time to revoke a registered trademark on the basis of non-use pursuant to section 46 of the Trademarks Act 2019 (“TMA 2019”).

Similarly, an aggrieved person may also apply to Court to invalidate a registered trademark under section 47 of the TMA. However, after the expiration of five years from the date of registration, the registered trademark may only be challenged if it is shown that- (a) the original registration was obtained by fraud; (b) the trademark offends sections 23(5)(a), (c), (d) or (e); or (c) the trademark was, at the commencement of the proceedings, devoid of distinctiveness of the goods or services of the registered proprietor.

For patent, third party observation process is newly implemented pursuant to Patents (Amendment) Act 2022 (Act A1649). Upon the grant of the patent, any aggrieved person may institute Court proceedings against the owner of the patent for the invalidation of the patent.

In respect of industrial design, any aggrieved person or any person may apply to Court for rectification of the Industrial Design Register or revocation of the registration of the industrial design.

For geographical indication, any interested person may, within the prescribed period, file a notice of opposition with the Registrar to oppose to the registration of geographical indication. In addition, the Court may, on the application of any person in the prescribed manner, cancel the registration of a geographical indication.

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.

Trademarks:

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. In the recent case of Diesel S.P.A. v. Bontton Sdn Bhd [2021] 2 CLJ 65, the Court of Appeal held that a trademark owner may move the Court to make a declaration of non-infringement.

Section 53 of the Trademarks Act 2019 (“TMA 2019”) provides that the original registration of the trademark shall, after the expiration of five years from the date of registration be taken to be valid in all respects unless it is shown that- (a) the original registration was obtained by fraud; (b) the trademark offends sections 23(5)(a), (c), (d) or (e) of the TMA 2019; or (c) the trademark was, at the commencement of the proceedings, devoid of distinctiveness of the goods or services of the registered proprietor.

Copyright:

The defendant can argue on the subsistence of copyright.

Industrial Designs:

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.

There may also be procedures available for challenge to be made at the Intellectual Property Corporation of Malaysia (“IPCM”). For example, for trademark, the challenge may be made at IPCM for registration of a trademark during the opposition proceedings.

Section 45 of the Trademarks Act 2019 enable the Registrar to revoke the registration of trademark due to administrative error.

In most cases, 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:

Patents:

1. 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;
2. The description or the claim does not comply with the requirements of the Patents Regulations 1986;
3. The drawings which are necessary for the understanding of the claimed invention have not been furnished;
4. The right to the patent does not belong to the person to whom the patent was granted;
5. The information that was provided to the Registrar under s 29(4) was deliberately incomplete or incorrect.

Utility Innovation:

1. The utility innovation is not a 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;
2. The description or the claim does not comply with the requirements of the respective regulations prescribed;
3. that any drawings which are necessary for the understanding of the claimed innovation have not been furnished;
4. The right to the certificate of utility innovation does not belong to the person to whom the certificate of utility innovation was granted;
5. The information that was provided to the Registrar under s 29(4) was deliberately incomplete or incorrect.

Confidential information:

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.

Trademarks:

Revocation by Court

The Court may revoke a registration upon application by an aggrieved person:

1. 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;
2. 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;
3. where the trademark has become diluted in the market because of acts of inactivity; or
4. 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).

Copyright:

That the work is not original or there is no copyright.

Industrial Designs:

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.

Patents:

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:

1. Compulsory licences which are granted due to the act or inaction of the patent owner that is against public interest;
2. Compulsory licences which are granted on the basis of inter-dependence of patents and
3. Compulsory use of the patent by the Government.

Trademarks:

By way of example, where the ground of invalidity exists in respect of only some of the goods or services for which the trademark is registered, the trademark shall be declared invalid as regards those goods or services only: section 47(7) of the Trademarks Act 2019 (“TMA 2019”).

Similarly, where grounds for revocation on the basis of non-use exist in respect of only some of the goods or services for which the trademark is registered, revocation shall relate to those goods or services only: section 46 (4) of the TMA 2019.

Industrial designs:

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.

Interim relief: Interlocutory injunction, Interim Mandatory Injunction, Anton Piller Order, Mareva Injunction

Final relief: Special damages, general damages, permanent injunctions, account of profits, costs (partial), exemplary damages, statutory damages, declaration, an order for delivery up or obliteration (if applicable).

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.

A defendant in any action may apply for security of costs. This would be at the discretion of the Court, and would normally be awarded in cases where the Plaintiff is a foreign entity with no assets within the jurisdiction.

Due to the COVID-19 pandemic, Malaysia has gone through numerous phases of movement control, for instance Movement Control Order (“MCO”), Conditional Movement Control Order (“CMCO”), Recovery Movement Control Order (“RMCO”) and Enhanced Movement Control Order (“EMCO”).

During the different phases of the movement control, the Intellectual Property Corporation of Malaysia (“IPCM”) (a statutory body tasked with administration of IP in Malaysia) issued directives and/or circulars to provide alternatives to applicants or owners of IP rights to make payments (as the counters of the IPCM are closed). These directives and/or circulars also provide for automatic extensions to respond to office actions issued by the respective Registrars.

Patent and Industrial Designs

1. Application for a hearing before the Registrar, which falls due during the period of the MCO 3.0 will be automatically extended by 7 days from the end of the MCO 3.0;
2. All patent hearings fixed during the period of the MCO 3.0 will be automatically vacated and rescheduled after the MCO 3.0;
3. All hardcopies of documents required to be served onto the IPCM physically will be automatically extended until the end of the MCO 3.0.

Trademarks and Copyright

1. All trademark hearings fixed during the period of the MCO 3.0 will be automatically vacated and rescheduled after the MCO 3.0;
2. Due dates to respond to office actions, wherein the office actions are available on the IPCM’s Online Search and Filing System (IPCM’s designated portal for most IP matters in Malaysia) shall remain as per the due date stated on the office actions;
3. Due dates to respond to office actions, wherein the office actions are not available on the IPCM’s Online Search and Filing System shall be automatically extended by 7 days from the end of the MCO 3.0;
4. Pursuant to Practice Direction No. 2/2020, renewals of trademarks may be made via email in which payment as are made via FPX (alternative payment method to that of payment in cash of cheque over the IPCM counter).

The IPCM’s efforts has been laudable with IP owners being able to apply for registration of their IP rights online.

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 3.0 period is automatically extended to the next subsequent day on which IPCM (acting as Receiving Office) is open for business.

Court Processes

Courts in several states such as the Federal Territory of Kuala Lumpur, Selangor, Penang and Putrajaya have the facilities to continue with hearings and/or trials of cases remotely during the MCO 3.0.

Further, most Courts in Malaysia now employ the electronic filing system, thus filing of new cases may still be done during the MCO 3.0.

To address the inevitable difficulties brought upon by the strict SOPs of the MCO 3.0, the Chief Justice of Malaysia issued a practice direction dated 31.5.2021 which provides, among others:

1. an automatic extension of all deadlines provided under the Rules of Court 2012 until the end of the MCO 3.0, without the parties needing to file an application for an extension of time; and
2. affidavits in support of an application filed under a certificate of urgency may be filed in court without its affirmation before a commissioner of oaths (in other words the execution by the deponent would suffice), with an undertaking by the solicitor that the affirmed copy of said affidavit be filed at the end of the MCO 3.0.