UNDERSTANDING INTELLECTUAL PROPERTY

Intellectual property (IP) represents the property or creations of your mind or intellect. If you develop a new product, service, process or idea it belongs to you and is considered your IP. You must formally register your IP to ensure legal ownership.

When most people think of “property” they imagine something tangible, such as real estate, jewelry, or computers. But intellectual property confers legal rights in intangible form. The three primary types of intellectual property are copyrights, trademarks, and patents. Each of these protect very different types of work, and it is important to learn the differences between them before determining whether you might qualify for protection.

Beside the three (3) primary types, Intellectual property protection in Malaysia also comprises industrial designs, trade secret, geographical indications and layout designs of integrated circuits. Malaysia is a member of the World Intellectual Property Organisation (WIPO) and a signatory to the Paris Convention and Berne Convention which govern these intellectual property rights.

In addition, Malaysia is also a signatory to the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) signed under the auspices of the World Trade Organisation (WTO). Malaysia provides adequate protection to both local and foreign investors. Malaysia’s intellectual property laws are in conformance with international standards and have been reviewed by the TRIPs Council periodically.

Let’s look into the three (3) primary types of Intellectual Property Rights (IPR):

Copyright:

Definition by WIPO; Copyright is a legal term used to describe the rights that creators have over their literary and artistic works. Works covered by copyright range from books, music, paintings, sculpture and films, to computer programs, databases, advertisements, maps and technical drawing.

There is no formal requirement for the work to be registered in order for copyright to be claimed or recognised, however a copyright owner may voluntarily register their copyright in Malaysia. Registration is still advisable for foreign SMEs as the registration can be extremely useful in enforcement proceedings as evidence of your ownership. To claim copyright ownership (i.e. to forewarn infringement), a notice with the symbol © may also be placed in/on the work followed by the name of the owner and the year of first publication.

How LONG does legal protection last? Copyright protection is not permanent. Generally, the Malaysian Copyright Act grants copyright protection (i.e. for literary, musical or artistic works) during the life of the author plus 50 years after his or her death. For unpublished works, copyright protection lasts for 50 years from the beginning of the calendar year following the publication date.

Patent:

A Definition by WIPO; Patent is an exclusive right granted for an invention. Generally speaking, a patent provides the patent owner with the right to decide how – or whether – the invention can be used by others. In exchange for this right, the patent owner makes technical information about the invention publicly available in the published patent document.

In Malaysia, the following cannot be patented:

1. Discoveries, scientific theories and mathematical methods.
2. Plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living microorganisms, micro-biological processes and the products of such micro-organism processes.
3. Schemes, rules or methods for doing business, performing purely mental acts or playing games.
4. Methods for the treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body.

(Utility Innovations, in Malaysia Utility innovations are exclusive rights for ‘minor’ inventions, which are different from a Patent. Utility innovations require a less substantial examination process because the degree of innovation required is less. In other words, utility innovations can be registered for ‘any improvement of a known product or process’. Only one single claim is allowed in a utility innovation application. Otherwise, all the other filing requirements are the same as those for a patent application.)

How LONG does legal protection last?

Patent protection lasts for 20 years from the date of filing. The term of a utility innovation certificate is initially 10 years from the date of application and this term is extendable for another 2 consecutive 5-year terms by filing a formal request for extension, thus making a total of 20 possible years of enforcement.

Trade Mark:

A definition by WIPO; Trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks date back to ancient times when artisans used to put their signature or “mark” on their products.

In Malaysia, a trade mark is prohibited from being registered if its use is likely to deceive or cause confusion to the public, if it is identical with or closely resembles a mark which is well-known in Malaysia for the same goods or services of another proprietor, or if it claims a false geographical indication (i.e. the trade mark misleads the public as to the true place of origin of the goods).

Madrid Protocol:

The Madrid Protocol is an international treaty administered by WIPO which allows a trademark owner to register the trademark in countries within the Madrid system simultaneously by filing one application with a single office. In Malaysia registration of IPR is handled by Malaysian Intellectual Property Organisation (MyIPO).

Starting from December 27th, 2019 last year local brand owners in Malaysia had begun using the Madrid System to protect their marks in the 121 territories of the System’s other 105 members, by filing a single international application and paying a single set of fees.

With its straightforward designation process, foreign companies and trademark owners can, from December 2019, seek trademark protection through the Madrid System when selling their products and services in Malaysia.

How LONG does legal protection last?

A trade mark registration will last for 10 years from the date of application, or priority date if the application is based on a ‘priority claim’ (if the same filing has been made within a certain time frame in any other country also belonging to the Paris Convention – see more details and a full list of members here – (http://www.wipo.int/treaties/en/).

This right means that, on the basis of a regular first application filed in one of the Contracting States, the applicant may, within a certain period of time (6 months for trademarks), apply for protection in any of the other Contracting States. These subsequent applications will be regarded as if they had been filed on the same day as the first application. In other words, they will have priority (hence the expression “right of priority”) over applications filed by others during the said period of time for the same mark. A trade mark registration is renewable every 10 years.) It is recommended that the trade mark registration be renewed before the registration expires.