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MALAYSIA: An Introduction to Intellectual Property

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Chambers Intellectual Property Overview 

On 27 September 2021, Malaysia unboxed its biggest development plan in its history – the 12th Malaysia Plan (“12th Plan”). Whilst a lot to unpack, the 12th Plan is essentially anchored on three themes (1. Resetting the economy; 2. Strengthening security, wellbeing and inclusivity; and 3. Advancing sustainability) supported by four catalytic policy enablers.

The common denominator underlying the four catalytic policy enablers seem to be the Malaysian Government’s acceptance and embrace of the unyielding development of emerging technologies and reception thereof. Three of the four policy enablers pertain to empowering the youth, accelerating technology adoption and innovation, and enhancing connectivity.

With these initiatives set to take its course over the next five years until 2025, it is expected that novel issues pertaining to intellectual property (“IP”) and technology, media and telecommunications (“TMT”) will knock on our Courts’ doors. Thus, it begs the question “Whether Malaysia’s IP regime is ready to face these new challenges?”

There are 5 predominant areas of IP, namely trademark (often accompanied by passing off), copyright, patent (and its lesser-known sibling i.e., utility innovation), industrial design and geographical indication. An extension of IP would also encompass matters related to confidential information, trade secrets and know-how.

A trademark is any sign, brand, logo or label affixed onto goods that may distinguish one’s goods from another. The Malaysian trademark regime saw a tectonic shift in 2019 when the new Trademarks Act 2019 (“TMA 2019”) came into force on 27.12.2019, repealing the Trade Marks Act 1976 (“TMA 1976”). The Malaysian trademark statute now contains 183 provisions (from only 84 provisions under the TMA 1976). The significant changes are, among others:

(1) the recognition of non-conventional trademarks (e.g., shape of goods or their packaging, colour, sound, scent, hologram, positioning and sequence of motion);

(2) enhancement of remedies available to brand owners who fall victim to trademark infringement (brand owners may now seek for damages and account of profits against the wrongdoer in certain circumstances);

(3) incorporation of the Madrid Protocol into our domestic legislation (this will allow a Malaysian trademark owner to potentially obtain trademark protection in 116 countries in one streamlined international application); and

(4) allow for trademark owners to collateralise their trademark.

Copyright is the protection accorded to a person’s brainchild that is reduced to material form. This typically takes the form of literary works, musical works, artistic works, photographs, films or sound recordings and broadcasts. In the current environment where personal protective equipment (“PPE”) and gloves are a limited commodity, there is an alarming amount of counterfeit PPE and gloves circulating in the market, and this has caused an increase in trademark and copyright dispute involving PPE and glove manufacturers.

Patent protects novel inventions which may come in the form of a product or a process. There are 3 requirements for a product or a process to be patentable, namely it has to be new, involves an inventive step and is industrially applicable. The Malaysian patent statute also provides for utility innovations (which is also known as minor patents or petty patents). The requirement of a utility innovation is merely that the innovation is new and that it is industrially applicable (without the need of inventive step). Much like patents, an owner of a granted utility innovation shall have exclusive rights to exploit said utility innovation for a total duration of 20 years.

Industrial design confers protection on features of shape, configuration, pattern, or ornament which are judged solely by the eye. The requirement to obtain a registered industrial design is that it is new. It is to be noted that copyright regime and industrial design regime are mutually exclusive of one another – in other words a copyright cannot be simultaneously protected as an industrial design. Examples of famous industrial designs are the design of a Mini Cooper, Coke contour bottle and Piaggio Vespa Scooter.

Geographical indication means an indication which identifies any goods as originating in a country or territory where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin. Registration may be applied for by a person carrying on an activity as a producer in the geographical area, a competent authority or a trade organisation or association. Examples of geographical indications are Kobe Beef, Sabah Tea, Ceylon Tea, Cuban Cigar and Basmati Rice.

At the cusp of the 5th industrial revolution and with Malaysia ushering in the 12th Malaysia Plan, it is expected that ICT will continue to thrive, and we are only scratching the surface with digitisation and artificial intelligence. An example of this is the laudable efforts of the Intellectual Property Corporation of Malaysia (“IPCM”) that now enables IP owners to apply for registration of trademark, patent, utility innovations, industrial design and geographical indication online.

The 2022 Budget (unveiled on 29 October 2021) is in tandem with the modern, digital, and innovative nature of the 12th Plan by providing tax incentives for providers of digital technology and digital infrastructure. However, in hopes that Malaysia will be the home of more inventors or innovators, it may be anticipated that infringers will continue to devise ingenious schemes to springboard off IP owners’ hard work.

As Malaysia sees the light at the end of the COVID-19 tunnel, the next few years will be crucial in reviving foreign investors’ confidence with the hopes of Malaysia becoming a digital content regional centre. The available IP legislations in Malaysia coupled with the recent trend in case laws where the Malaysian Courts are applying a pragmatic approach in deciding cases which balances commercial and business realities is encouraging.