ASEAN INTELLECTUAL PROPERTY ASSOCIATION

IP Protection in Malaysia

TRADE MARKS

The legislation which governs trade marks in Malaysia is the Trade Marks Act 1976 as amended by the Trade Marks (Amendment) Act 1994 and the regulations made thereunder i.e. the Trade Marks Regulations 1997 as amended by the Trade Marks (Amendment) Regulations 2011.

REGISTRABILITY

By the above legislation, the owner of a trade mark may register his mark for goods as well as services.

INFORMATION TO BE SUPPLIED BY THE APPLICANT

An applicant for registration of a mark must supply the following:-

1.         The name of the applicant;

2.         If it is a partnership, the name of the partners and the trading style;

3.         The address of the applicant;

4.         The goods/services and, if possible, the class to be covered by the registration;

5.         10 copies of the representation of the mark;

6.         A Statutory Declaration affirming that the applicant is the bona-fide owner of the mark duly affirmed before a Notary Public if executed outside Malaysia;

7.         The translation and transliteration of non-English words appearing on the trade mark; and

8.         The date of first use if the mark has been used in Malaysia.

The applicant must note two points in particular:

It is not possible to file an application to cover all goods/services in one class unless the applicant has used his trade mark in relation to all such goods.

If appropriate the applicant may file the application on an intent-to-use basis. 

APPLICATION CLAIMING PRIORITY UNDER THE PARIS CONVENTION

Malaysia acceded to the Paris Convention on 1st January, 1989. The applicant may claim priority from his basic application in the member country of the Paris Convention provided the application in Malaysia is filed within six (6) months of the date of the basic application. 

EXPEDITED EXAMINATION 

The request for expedited examination of a trade mark application can be done by filing a request for an approval for expedited examination on Form 5A with the prescribed fee within 4 months of the application date. 

The request for approval of the expedited examination will be granted under one of the following conditions:- 

  1. It is for national or public interest;
  2. There are infringement proceedings taking place or evidence showing potential infringement with regards to the trade mark applied for;
  3. Application for registration of the trade mark is a condition to obtain monetary benefits from the government or institutions; or
  4. Any other reasonable grounds. 

If the request for approval of the expedited examination is approved by the Registrar, the applicant is required to file the Request for expedited examination (Form 5B) together with the prescribed fee within 5 working days of the date of Registrar’s notification. 

Note: 

The Registry will issue the certificate of registration in 6 months 3 weeks of the filing request for Expedited Examination (Subject that the application is statutory compliance) 

OBJECTIONS FROM THE REGISTRAR 

The Registrar may raise objections to registration of the mark on the following grounds:- 

1.             The word is not an invented word; 

2.             The word has direct reference to the character and quality of the goods/services; 

3.             The word is a geographical name; 

4.             The word is a surname; or 

5.         The mark is not distinctive. 

The Registrar may also object to the registration of the mark for the reason that it resembles marks already registered or those pending registration. 

Further, the Registrar may require that the goods/services be amended; that a disclaimer be added to the exclusive right to use the common words, letters and numbers appearing on the mark; or that the mark be associated with other marks of the applicant filed with the Registry. 

EX-PARTE HEARING 

The Registrar gives the applicant an opportunity to be heard as regards his objections at an ex-parte hearing. Besides submitting arguments on the law, the applicant’s trade mark agent will normally canvas the view that the application should be proceed on account of long and substantial use of the mark in Malaysia by the applicant. 

ADVERTISEMENT

Once the application is accepted by the Registrar and the fees have been paid, the mark is advertised in the government gazette. Members of the public may oppose the registration of the trade mark. The application to oppose must be filed within 2 months of the advertisement in the government gazette.  

OPPOSITION

Opposition proceedings will be commenced by the opponent filing the notice of opposition within two (2) months of the advertisement, and will serve a copy of the notice of opposition to the applicant. The applicant will file his counter statement within two (2) months of being served the notice of opposition, and will send a copy of the counter statement to the opponent. The opponent will follow by filing a statutory declaration within two (2) months, normally specifying the use by the opponent of his mark which is similar to the one covered by the application. The applicant will be given the opportunity within two (2) months of being served with the opponent’s statutory declaration to file his statutory declaration in reply. The Registrar will give notice for the parties to submit written arguments or submission.

ISSUE OF CERTIFICATE 

If there is no opposition after the advertisement in the government gazette or if the opposition has been overcome, the Registrar will issue the certificate of registration. 

RENEWAL 

The mark will be deemed to be registered for ten (10) years from the date of the application. An application to renew the registration may be filed three (3) months before the date of expiry. Each renewal is for a period of ten (10) years. 

ASSIGNMENT 

The owner of a mark may part with his rights in it by assigning the mark to any person. The person becoming entitled is required to register the assignment with the Registry of Trade Marks. 

A Deed of Assignment must be drawn up and registered at the Registry. It is possible to assign a pending application together with the goodwill associated with the business connected with the mark, but the recordal of the assignment will only be done after the mark is registered. However, if the assignment of the pending application is done along with a registered mark and at the same time and to the same person as the registered trade mark, and the unregistered trade mark is or was used in the same business as that of the registered trade mark, then the application for recordal of the pending application will be examined along with the registered mark. 

REGISTERED USER

In the event that the Registered Proprietor wants to remain as the owner of the mark but wishes to permit another person to use the mark, he may enter into a

registered user agreement with the party and register the same at the Registry. The procedure under the Trade Marks Regulations 1997 must be complied with. 

RECTIFICATION AND NON-USE 

An aggrieved person may apply to rectify the Register or seek removal for non-use of a mark from the Register. The application for rectification and the application for removal on account of non-use are to be made to the High Court.

PATENTS 

Patent protection in Malaysia is governed by the Patents Act 1983 as amended by the Patents (Amendment) Act 1993, and the Patents Regulations 1955 as amended by the Patents (Amendment) Regulations 2011. 

REGISTRABILITY 

An invention is patentable in Malaysia if it is new, it involves an inventive step, and it is industrially applicable.  The performance of any act in respect of the claimed invention should not be contrary to public order.  An invention is deemed to be new if it is not anticipated by prior art.  Prior art means: 

a.         everything disclosed to the public anywhere in the world by written publication or in Malaysia, by oral disclosure, by use or in any other way prior to the filing date or the priority date of the patent application claiming the invention. 

b.         the contents of a domestic patent application having an earlier filing date or priority date than the patent application referred to in (a) above to the extent that such contents are included in the patent granted on the basis of the said domestic patent application. 

An invention will be considered as involving an inventive step if such inventive step would not have been obvious to a person having ordinary skill in the art.  An invention will be considered industrially applicable if it can be made or used in any kind of industry.

With effect from October 1, 1986, the following types of applications may be filed under the Patents Act 1983: 

1.         Applications for grant of patents for which basic applications have already been filed in a Convention country; or 

2.         Applications for grant of patents for which no previous applications have been filed in a Convention country and only fresh applications are being contemplated for Malaysia. 

PARTICULARS NEEDED

For the aforesaid applications, the documents and particulars needed are appended below: 

1.         The title of the invention;

2.         The applicant’s name, address and nationality; 

3.         If the applicant is a company, its registered address and country of incorporation; 

4.         With regard to the invention (if the inventor is not the applicant) Form 22 must be signed wherever possible by the applicant to the following effect:- 

                        “The Invention was made by the Inventor(s) in the course of his (their) employment with the Applicant.”

                        “The Invention was made by the Inventor(s) in the execution of work which was commissioned by the Applicant.” 

            If the inventor has assigned his rights in the invention to the Applicant, Form 22 should indicate the same, and brief particulars of the deed or any other relevant document should be incorporated in the said form.  The deed of assignment need not be filed with the Registry.  However, a copy should be forwarded to the patent agent for his record; 

5.         With regard to the priority claim, the filing date, the application number, the country of the application from which priority is claimed and the symbol of the International Patent Classification allocated to the said application is required.  [The certified copy of the earlier application, together with the English translation certified by the translator, are not required to be filed along with the application.  These need only be filed when the Registry of Patents calls for the same]; 

6.         The specification consisting of a description, a claim or a set of claims, an abstract, and drawing(s); and 

7.         The authorisation to the patent agent on Form 17 to act on the applicant’s behalf, executed by the applicant. 

EMPLOYEE’S INVENTION 

Section 20 of the Patents Act 1983 provides as follows:

 

            “20(1)    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, as the case may be: 

            Provided that 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.

 

                 (2)    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:

 

            Provided that 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.” 

STATIONERY 

All documents to be filed should be on A4 size paper which is strong, smooth, non-shiny, durable, free from cracks, creases and folds.  Every fifth line of each sheet of the description and claims has to be numbered in Arabic numerals placed on the left of the relevant lines and on the right of the margin.  Drawings, if any, should be executed in durable, black, dense and dark ink which is uniformly thick with well defined lines and strokes and without colourings.  It must be indicated in the abstract which of the drawings is most illustrative. 

CLAIMS 

The claims shall be clear and concise and fully supported by the description, and the number of the claims shall be reasonable taking into consideration the nature of the invention.  Claims shall not contain drawings and shall not rely, unless necessary in respect of the technical features of the invention, on references to the description or drawings.  Where the application contains drawings, the technical features mentioned in the claims shall, whenever possible be followed by reference signs relating to such features and placed between parentheses.  Omnibus claims are disallowed. 

All dependent claims referring back to a single previous claim, and all dependent claims referring back to several previous claims, shall be grouped together to the extent and in the most practical way possible.  

DISCLOSURES 

Particulars of disclosures must also be furnished when filing the application.  The following disclosures are permitted under the said Act and therefore will not affect the novelty of the patent:- 

1.         A disclosure which occurred within one year preceding the date of the patent application, which disclosure was by reason or in consequence of acts committed by the applicant or his predecessor in title; and 

2.         A disclosure which occurred within one year preceding the date of the patent application, which disclosure was by reason or in consequence of any abuse of the rights of the applicant or his predecessor in title. 

 PRIORITY 

Malaysia acceded to the Paris Convention for the Protection of Industrial Property on January 1, 1989. 

An applicant in Malaysia is now required to file his application for a patent within twelve months of the first filing date of the application in any other member country of the Convention in order to claim priority from the earlier basis application.

 STAGES

 

The application for the grant of patent goes through the following stages: 

1.             Filing of the application; 

2.         Preliminary examination; 

3.         Full or modified substantive examination; and 

4.         Grant of a patent. 

CERTIFICATE OF FILING 

When the application is filed at the Registry of Patents, it will issue a certificate of filing if the papers are in order. The certificate of filing will include the application number and the official filing date. 

PRELIMINARY EXAMINATION 

The applicant need not make a formal request for preliminary examination. The Registrar is required to make such an examination on her own so long as the application is not withdrawn. The preliminary examination report is usually given along with the certificate of filing. 

SUBSTANTIVE EXAMINATION 

The request for a substantive examination can be requested simultaneously when filing an application or must be filed within the period prescribed under the Patents Regulations. The substantive examination may take the form of a full or modified examination. 

The request for full substantive examination shall, where appropriate, be accompanied by: 

1.      Information relating to the application number and filing date of any application for a patent or other title of industrial property protection filed with any prescribed industrial property office* and/or ASEAN member states** relating to the same or essentially the same invention as that claimed in the application;

        

2.      Information relating to the number assigned to a patent or other title of industrial property protection granted for the same or essentially the same invention as that claimed in the application by any prescribed industrial property office;

        

3.      The results of any searches or examinations carried out by any prescribed industrial property office relating to the same or essentially the same invention as that claimed in the application; and

        

4.      Confirmation that the Malaysian application is for an invention which is the same or essentially the same as the invention claimed in the application of any prescribed industrial property office. 

                                                                                                                                                                  Note:

 

*   “Prescribed industrial property office” means the Patent Office of Australia, the Patent Office of Japan, the Patent Office of the Republic of Korea, the Patent Office of the United Kingdom, the Patent Office of the United States of America or the European Patent Office, as the case may require, in its capacity as a national office or, where appropriate, as an International Searching Authority or as an International Preliminary Examination Authority under the Patent Cooperation Treaty.

**ASEAN member states are Singapore, Cambodia, Indonesia, Malaysia, the Philippines, Lao PDR, Thailand and Vietnam. 

The request for a modified substantive examination shall be accompanied by: 

1.      A certified true copy of the patent granted or other title of industrial property protection granted to the applicant or his predecessor in title in the prescribed country or under the prescribed treaty or Convention, and where the patent or other title of industrial property protection is not in the English language, a certified translation in the English language thereof;

        

2.      Where the description, claims or drawings of the invention granted a patent or other title of industrial property protection by the prescribed country or under the prescribed treaty or Convention are not, apart from matters of form, substantially the same as the description, claims or drawings of the invention claimed in the application, the amendments required for the purpose of bringing them into conformity; and

 

3.      Confirmation that the Malaysian application is for an invention which is the same or essentially the same as the invention claimed in the application of any prescribed industrial property office.

 

         Note:

 

“Prescribed country” means Australia, Japan, Korea, the United Kingdom, the United States of America, as the case may require;

 

         “Prescribed treaty or Convention” means the European Patent Convention.

 

The Examiner will then give her report on the substantive examination. If there are deficiencies in the application which the applicant needs to attend to, before the application may be accepted or if the invention is not patentable, the Examiner will issue an adverse report and invite the applicant to make a response to the said examination report. If at the stage of the substantive examination, the Examiner is satisfied that the invention is registrable, a clear report is issued and the Registry will call for the registration fees.

EXPEDITED EXAMINATION 

The request for expedited examination to expedite the examination of a patent application can be done by filing a request for an approval for expedited examination on Form 5H with the prescribed fee after 18 months from the priority date/filing date. 

The request for approval of the expedited examination will be granted under one of the following conditions: 

  1.  It is for the national or public interest;
  2.  There are infringement proceedings taking place;
  3. The applicant has already commercialized or plans to commercialize the invention;
  4. The invention relates to green technologies;
  1. To obtain funds or monetary benefits from the government or recognized institutions;
  2. Any other reasonable grounds. 

If the request for approval of the expedited examination is approved by the Registrar, the applicant is required to file the Request for expedited examination (Form 5I), together with the prescribed fee, within 5 working days from the date of Registrar’s notification. 

Note:

The processing time for expedited examination is two (2) months (for first office action) from the date of receipt of request for expedited examination provided that the application is a smooth one (clear cut case). 

CERTIFICATE OF GRANT AND RENEWAL 

Upon receiving the clear substantive examination report, the Certificate of Grant will be issued.  The certificate of grant confers upon the owner of the patent the right to prevent others from exploiting his invention for a period of 20 years from the filing date. 

Prescribed annual fees are payable to the Registrar to keep the patent in force.  Annual renewal fees are payable on and from the expiration of the first year of the life of the patent and each succeeding year up to the end of protection of the life of the patent. 

ADVERTISEMENT OF GRANT 

The abstract relating to the grant of the patent and its most illustrative figure are advertised in the government gazette as the final stage in the processing of the patent application. 

Opposition and Invalidation 

There are no opposition proceedings before the Registrar of Patents. The validity of the patent may be questioned by taking proceedings in the High Court. 

UTILITY INNOVATION 

An invention qualifying as a utility innovation ought to be new and be an innovation which creates a new product or process, or any new improvement of a known product or process, which can be made or used in any kind of industry, and which includes an invention. Such an invention will generally not display a high degree of inventiveness in comparison to an invention qualifying for a patent, and may include only minor improvements to existing inventions. 

The duration of a certificate for utility innovation is 5 years from the date of grant and is renewable for 2 terms of 5 years each. 

Generally, the particulars required for an application for a certificate for a utility innovation are the same as those required for a patent application. The application for utility innovation will also go through the same stages as the patent application.  

INDUSTRIAL DESIGNS 

The legislation governing industrial designs in Malaysia is the Industrial Designs Act 1996 as amended by the Industrial Designs (Amendment) Act 2013 and the Industrial Designs Regulations 1999 as amended by the Industrial Designs (Amendment) Regulations 2012 and Industrial Designs (Amendment) Regulations 2013.  The Industrial Designs Act 1996came into force on September 1, 1999.  It repealed the United Kingdom Designs (Protection) Act 1949 of West Malaysia, the United Kingdom Designs (Protection) Ordinance of Sabah (CAP 152) and the Designs (United Kingdom) Ordinance of Sarawak (CAP 59).  The requirement to seek registration in the United Kingdom in order to obtain protection in Malaysia has come to an end.  The Industrial Designs Act 1996 provides for the application to be filed directly in Malaysia.

 The Industrial Designs Act 1996 includes transitional provisions to take care of the registrations granted and applications pending in the United Kingdom as at 1st September 1999.  By s. 50(2), the registrations granted in the United Kingdom will continue to have the maximum period of validity accorded to the registrations under the United Kingdom Registered Designs Act 1949.  However extension fees need to be paid in Malaysia to avoid lapse in Malaysia. 

As to an application filed in the United Kingdom which is still pending as at 1st September 1999, s. 50(1) provides that in order to secure protection in Malaysia, a further application in Malaysia must be filed within 12 months of 1st September 1999.  The said application in Malaysia will carry the priority date accorded to the application in the United Kingdom. 

CONVENTION 

The Malaysian application may claim the priority date of an earlier application filed not more than 6 months before the Malaysian application in the member state of an international treaty or convention.  As Malaysia is a signatory to the Paris Convention for the Protection of Industrial Property, advantage may be taken of this provision.

TYPES OF APPLICATIONS 

The application for grant under the Industrial Designs Act 1996 may take the form of any one of the following: 

1.             An application for grant of a design directly in Malaysia; 

2.             An application for grant of a design claiming convention priority and filed within 6 months of the convention application; or 

3.             An application for grant of a design under the transitional provision i.e. an application filed on or before 1st September 2000 and claiming priority, if any, accorded to the application in the United Kingdom. 

If there is a corresponding United Kingdom application pending as at 1st September 1999, it does appear that a valid Malaysian application may be filed on or before 1st September 2000 claiming priority even though more than 6 months have lapsed since the priority date of the convention application. 

DEFINITION OF A DESIGN 

An industrial design is defined in the Act as “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[.]” 

Therefore, to be registrable there must be aesthetic value in the article, i.e. the article must have eye appeal.  An article which is defined purely by its functional purpose will not be registrable.  

FORMALITIES 

Where an application has been accorded a filing date and has not been withdrawn, the application will be examined to see whether it complies with the formal requirements.  The Registrar will check into the following: 

1.             whether the prescribed forms have been filed and the fees have been paid; 

2.             whether the application has been classified according to the Locarno Classification; 

3.             whether 1 set of representations have been submitted and the representations comply with the physical requirements stated in the Regulations; 

4.             whether a statement of novelty is given; 

5.             whether the design is contrary to public order or morality; and 

6.         where the application claims convention priority, whether full information of the priority application and a certified copy of the earlier application have been filed. 

NOVELTY 

For a design to be registrable in Malaysia the same must be new to Malaysia. The legislation provides that some disclosure may be disregarded.  The following disclosures taking place within 6 months preceding the filing date of the application will be disregarded: 

a)             Disclosure appearing in an official or officially recognized exhibition; and 

b)            The unlawful disclosure by a person other than the applicant or his predecessor in title. 

The Industrial Designs Registration Office does not carry out novelty searches.  It is expected that an application for registration will be completed and registration secured within 12 months of the filing of the application. 

PUBLICATION 

Upon registration of the design, the Industrial Designs Registration Office will arrange for the publication of the design in the gazette and will maintain a Register which is open to the public.  In an action for infringement where the claim is for damages the courts will ascertain whether the defendant was aware 

of the existence of the registration before awarding damages.  It has been the practice under the repealed laws for the registered proprietor of a United Kingdom design to advertise the fact that the said design has been registered in a local newspaper.  Now this task of advertising in a local newspaper appears optional since the Industrial Designs Registration Office will publish the registration in the gazette. 

DURATION 

The transitional provisions provide for the extension of the United Kingdom registrations upon payment of the extension fees.  What this means is that registrations in force in the United Kingdom continue to be in force in Malaysia provided that the extension fees are paid as and when they fall due.  The term of a registered design in the United Kingdom is 25 years. 

The term of a design registered under the Industrial Designs (Amendment) Act 2013 is 25 years from the filing date.  Extension fees become due on the anniversaries of the 5th year, 10th year, 15th year, 20th year and 25th year from the date of registration.  All that the registered owner of a design registration need to furnish when paying the extension fee is a copy of the registration.  Proof of commercial viability is not required.   

PARTICULARS REQUIRED TO FILE AN APPLICATION 

The particulars and documents which are required to file an application for registration of an industrial design in Malaysia are as follows: 

a)             The full name, address and nationality of the applicant; 

b)            The full name and address of the author (creator); 

c)             The name of the article or set of articles; 

d)            Class and subclass according to the International Classification of Designs; 

e)             Clear representations of the drawings. The paper used should be clear, dense and suitable for photocopying.  The number of drawings will depend on the article to be protected.  All relevant elevations should be covered; 

f)             Appointment or change of agent and change of address for service on ID Form 10 signed by the applicant; 

g)            Statement Justifying the Applicant’s Right to an industrial design (SJAR) signed by the author(s); 

h)             Statement of Novelty, i.e. a statement of the features which are novel and which are to be claimed; 

i)              Particulars of disclosure, if any, in Malaysia; and 

j)              Priority data (if any) – Country, date of application and the priority document.  The priority document may be filed with the Industrial Designs Registration Office at a later date.

COPYRIGHT 

The legislation governing copyrights in Malaysia is the Copyright Act 1987 as amended by the Copyright (Amendment) Act 2012 and Copyright (Notice of Prohibition of Import) Regulations 1987, Copyright (Public Libraries and Educational Scientific or Professional Institutions) Order 1987, Copyright (Application to other Countries) Regulations 1990,  Copyright (Licensing Body) Regulations 2012, Copyright (Voluntary Notification) Regulations 2012,  and Copyright (Copyright Tribunal) Regulations 2012.
WORKS ELIGIBLE FOR COPYRIGHT 

Under the Copyright Act 1987, copyright protection is available for the following:

 a.         literary works; 

b.         musical works; 

c.         artistic works; 

d.         films; 

e.         sound recordings; and 

f.          broadcasts. 

This Act came into force on 1st December, 1987 and includes “computer programs or compilations of computer programs” in its definition of literary works.  The computer program is further defined as an expression, in any language, code, or notation, of a set of instructions (whether with or without related information) intended to cause a device having an information processing capability to perform a particular function either directly, or after either or both the following: 

a.         conversion to another language, code or notation; 

b.         reproduction in a different material form. 

ACQUISITION OF COPYRIGHT 

There are no registration requirements to acquire copyright in Malaysia.  Copyright is automatically conferred if the author is a qualified person, i.e. a person who is a citizen of or a permanent resident of Malaysia or a body corporate established in Malaysia and constituted with legal personality under the laws of Malaysia.  It is also acquired if the work eligible for copyright is made in Malaysia or is first published in Malaysia or is published in Malaysia within thirty days of its first publication elsewhere.  Publication under the Act means making available a copy or copies of the work with the consent of the author or any person lawfully claiming under the author in a manner sufficient to satisfy the reasonable requirements of the public, whether by sale or otherwise. 

Malaysia became a member of the Berne Convention for the Protection of Literary and Artistic Works on 1st October, 1990.  Under the Berne Convention, copyright protection in Malaysia is accorded to authors who are nationals of one of the countries of the Convention for their works, whether published or not; or, if they are not nationals, their works first published in a member country of the Convention; or simultaneously if it is published in two or more countries within 30 days of its first publication. 

STATUTORY DECLARATION 

In view of the lack of formal requirements for conferment of copyright, it is advisable to draw up a statutory declaration or affidavit to establish one’s rights in the copyright.  Section 42(1) of the Copyright Act 1987 provides that an affidavit or statutory declaration made before any person having authority to administer oath by any person claiming to be the owner of the copyright or by his agent in any of the works eligible for copyright under this Act stating that (a) at the time specified therein copyright subsisted in such work, (b) he is the owner of the copyright and (c) a copy of the work annexed thereto is the true copy thereof, shall be admissible in evidence in any proceedings under this Act and shall be prima facie proof of the facts contained therein.

 OWNERSHIP AND RIGHTS 

Copyright in a work eligible for copyright shall vest initially with the authors.  If the work is commissioned by a person who is not the author’s employer or if it 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, as the case may be, unless there is an agreement to the contrary between the parties. 

Section 13(1) of the Act provides that the owner of copyright will have the exclusive right to control in Malaysia the reproduction in any form, performance, showing or playing to the public, broadcasting, communication by cable, and distribution to the public by sale, rental, lease or lending of the whole or of a substantial part of the work either in its original or a derivative form during the life of the author plus fifty years after his demise.  

DUAL PROTECTION

The Copyright (Amendment) Act 1996 and the Industrial Designs Act 1996 which came into force on 1st September 1999 now eliminate the overlap between the Copyright Act and design legislation with regards to the protection of designs.  Prior to the coming into force of both these acts, a design – if registered – was accorded dual-protection, in that it was protected under UK design law as well as under Malaysian copyright law. However, the Copyright (Amendment) Act 1996 has removed copyright protection for works falling within the definition of a design. 

Therefore, a design registered under the Industrial Designs Act 1996 may only be protected as such and, if unregistered, will lose copyright protection upon the production of 50 articles containing that design. 

In this respect, designs must now be registered at the Industrial Designs Registrations Office in Malaysia, failing which it will not be accorded any protection under copyright law.  

‘REVERSE ENGINEERING’ 

‘Reverse engineering’ is the process whereby a product or a substantial part of that product is reproduced by indirectly copying through inspecting and measuring the product or a substantial part of the product without sight of the drawings or blueprints relating to the product or a substantial part of the product. Since the Copyright Act 1987 makes direct copying an infringement, it follows accordingly that indirect copying would also amount to an infringement of the two-dimensional drawings. 

Therefore, copyright would appear to exist in both the drawings as well as the three-dimensional reproduction of the said drawings. 

Under the Copyright (Amendment) Act 1996, ‘artistic work’ has been redefined to abstain from making any reference to three dimensional works, which was previously found in the pre-amended Copyright Act. 

The Copyright (Amendment) Act 1996 has also revised the definition of ‘reproduction’ to mean the making of one or more copies of a work in any form or version, and includes the making of a copy in three dimensions of a two-dimensional work, and the making of a copy in two dimensions of a three-dimensional work. 

By this definition, it appears that the reproduction in three dimensions will be an infringement of a two-dimensional work since no copyright protection exists in the three-dimensional work itself. 

Section 13A of the Copyright (Amendment) Act 1996 provides that  

(1)           It shall not be an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface 

(a)           to make an article to the design, or to copy or to reproduce an article made to the design; or 

(b)           to issue to the public, or include in a film, broadcast or cable programme service, anything the making of which was, by virtue of paragraph (a), not an infringement of that copyright. 

(2)           In this section 

“design” means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article, other than surface decoration; and 

“design document” means any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise. 

Therefore, if an artistic work which falls within the definition of a design, as above, is not registered under the Industrial Designs Act 1996, it will result in the said artistic work becoming freely exploitable.

ENFORCEMENT OF INTELLECTUAL PROPERTY 

TRADE MARKS 

When a person not being the registered proprietor of a trade mark commits an act of infringement, he will be liable to both civil and criminal proceedings. 

Civil Proceedings 

Civil proceedings for infringement are commenced by filing a writ of summons for an injunction, obliteration of all the offending marks on the goods, damages or an account of profits, discovery of relevant documents, and costs.  If the plaintiff is a foreign entity, the court may order it to provide security for costs and damages on the application of the defendant since there may be no assets within the jurisdiction against which attachment proceedings may be taken by the defendant in the event of the plaintiff failing to succeed in its case. 

While the main action is pending, an interlocutory injunction and an Anton Piller Order may be obtained against the infringers to restrain the infringers from continuing with their infringing activities until the trial of the action, and for the plaintiff to enter the premises of the infringers to take possession of the infringing items and documents relating to the same.  The defendant cannot be called upon to give the names and addresses of the suppliers of the infringing items and the retailers and others to whom he had distributed the said items if he invokes the privilege against self-incrimination by showing that there is a real risk that his incriminating answers would expose him to arrest or prosecution for an offence.  

Prosecution

The owner of a trade mark may apply for a trade description order by filing an application in the High Court.  The said order may be served on the Enforcement Division of the Minister of Domestic Trade, Co-operatives and Consumerism.  Once it is served, the officers from the said Division will obtain search warrants, enter the premises of the offenders, seize the offending goods, and prosecute the offenders.  The said officers will act on information provided by the trade mark owners to execute the search warrants; they will, in addition, take action against other offenders whom they come across in the course of their investigations. 

PATENTS 

Unlike trade marks, enforcement of patents may only be effected by way of civil proceedings for infringement and the procedures and remedies are similar to those affecting trade marks. Criminal proceedings are not available for infringement of patents. 

COPYRIGHT 

Civil Proceedings 

If a person engages in the activity of copying a copyrighted work except as permitted by the Act, he will be liable to civil proceedings for infringement.  The procedures and remedies for civil proceedings for infringement of a copyrighted work are similar to those affecting trade marks. 

Prosecution 

Criminal proceedings are commenced by the complainant by filing a complaint with the Controller of Copyright attached to the Minister of Domestic Trade, Co-operatives and Consumerism or the Police.  The Assistant Controller of Copyright or the Police Officer of the rank of an inspector is given wide powers of entry and search of the premises where the infringing items are kept and seizure of the infringing items and contrivances. A magistrate may be called upon to view the premises if it is impractical to remove the offending goods on account of their amount and size.  The copyright owner must provide assistance to the officers of the Ministry in identifying the infringing items from the genuine ones.  The offenders are prosecuted and the penalties meted out are serious.  

Customs 

Under the Copyright Act, 1987, the copyright owner may seek the assistance of the Customs Authorities to prevent importation of the infringing copies.  The copyright owner must give the Minister of Domestic Trade, Co-operatives and Consumerism a notice in writing that he is the copyright owner of the work and that he requests the Minister, while the copyright subsists, to treat as prohibited goods all copies of the work, made without his consent.  When such a notice is given, the importation of any infringing copies will be prohibited unless it is for the importer’s private and domestic use.  An officer of the Customs may seize the infringing copies which will be liable for forfeiture.  The importer may be prosecuted or be liable to civil proceedings.  

DESIGNS 

For infringement of designs, civil proceedings may be commenced in the High Court and the procedures and remedies are the same as those affecting trade marks.  Criminal proceedings are not available for designs. 

PASSING-OFF 

Actions for infringement of trade marks, copyright, designs and patents may also include a claim for passing-off.  To maintain this action, the plaintiff must show reputation and trade in Malaysia.  The procedures and remedies are the same as those affecting trade marks in civil proceedings.