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Intellectual Property Rights
Legislation
Malaysia’s intellectual property laws include:
  • Copyright Act 1987
  • Trade Marks Act 1976 and the Trade Marks Regulations 1997
  • Patents Act 1983 and the Patents Regulations 1986
  • Industrial Designs Act 1996 and the Industrial Design Regulations 1999
  • Intellectual Property Corporation of Malaysia Act 2002
  • Layout Designs and Integrated Circuit Act 2000 ·Geographical Indications Act 2002.

Malaysia’s intellectual property laws originate from English laws and are generally similar to the intellectual property laws in other countries. Malaysia is a member of numerous international conventions and has amended its laws in accordance with the terms of its accession to these conventions.

Copyright
The Copyright (Amendment) Act 1990 extended copyright protection to foreign works following Malaysia’s accession to the Berne Convention of Literary Works 1886. The Copyright (Amendment) Act 1997 and the Copyright (Amendment) Act 2000 gave protection for performers rights pursuant to Malaysia’s international obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), an agreement scheduled to the General Agreement on Tariffs and Trade of the World Trade Organization.
There is no requirement for registration in order to acquire copyright protection. Under the Copyright Act, the works eligible for copyright are:
  • literary works
  • musical works
  • artistic works
  • films
  • sound recordings
  • broadcasts
  • derivative works ·published editions.

The duration of copyright in Malaysia is as follows:

  • copyright in any literary, musical or artistic works subsist during the life of the author and 50 years after the author’s death
  • copyright in a sound recording subsists for a period of 50 years from the beginning of the calendar year following the year in which the recording was first published or, if the sound recording has not been published, from the beginning of the calendar year following the year of fixation
  • copyright in a broadcast subsists for a period of 50 years computed from the beginning of the calendar year following the year in which the broadcast was first made ·copyright in a film subsists for a period of 50 years from the beginning of the calendar year following the year in which the film was first published or first made available to the public or made, whichever is the latest.

Copyright of foreign work protected in Malaysia by reason only of the amendments made pursuant to Malaysia’s accession to the Berne Convention for the Protection of Copyright in Respect of Literary and Artistic Works ceases to subsist on the expiry of the duration of protection under the laws of the country of origin of the work or as provided in the Copyright (Application to Other Countries) Regulations 1990.
Copyright initially vests in the author. However, where a work is commissioned or where a work is made in the course of the author’s employment, the copyright shall be deemed to vest in the person who commissioned the work or the author’s employer, unless there is any agreement to the contrary. Copyright is transferable by assignment, testamentary disposition or by the operation of law, as movable property.

Trade marks
Malaysia is a member of the Paris Convention for the Protection of Industrial Property and is bound by TRIPS. As a member of the Paris Convention, Malaysia gives:
  • a right of priority to applicants for trade mark protection in any Convention country, if the Malaysian application is filed within six months of the former application
  • temporary protection to trademarks of goods and services that are the subject matter of an exhibition at an official or officially recognized international exhibition held in Malaysia or in any Convention country or a foreign country declared in the Gazette as affording Malaysia reciprocal protection of trade marks.

In accordance with the requirements of TRIPS:
  • the Geographical Indications Act 2000 was passed and came into force on 25 August 2001. The Geographical Indications Act 2000 allows a producer in a specified geographical area to apply for the registration of an indication of the geographical origins of its goods
  • the Trade Marks Act 1976 was amended to abolish the division of the Trade Marks Register into Part A and B and confers protection on well-known marks regardless of whether the proprietor is carrying on business or has any goodwill in Malaysia. The import of counterfeit trade mark goods is prohibited and such goods may be seized by customs officers.
A trade mark may be registered for any goods or services. A proprietor may apply to register a trade mark used or proposed to be used by the proprietor. A trade mark is registrable if it contains or consists of at least one of the following particulars:
  • the name of an individual, company or firm represented in a special or particular manner
  • the signature of the applicant for registration or of some predecessor in his business
  • an invented word or words
  • a word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname  ·any other distinctive mark.

The registration of a trade mark is for a period of ten years but may be renewed from time to time for a period of ten years from the date of expiry.

Patents
An invention is patentable if it is new, involves an inventive step and is capable of industrial application. An invention involves an inventive step if the inventive step would not have been obvious to a person having ordinary skill in the art.
Rights to a patent belong to the inventor. However, for a work commissioned or made in the course of the inventor’s employment, the rights to a patent are deemed to vest, respectively, in the commissioner of the work or the employer. An employee-inventor is entitled to equitable remuneration to be fixed by a court in the absence of agreement between the parties if the invention has an economic value much greater than the parties could reasonably have foreseen at the time of concluding the contract of employment.
The owner of the patent shall have exclusive rights in relation to the patent to exploit the patented invention, to assign or transmit the patent and to conclude license contracts.
A patent expires 20 years from the filing date of the application.
Priority may be claimed from:
  • a domestic application for a patent
  • an application for a patent in a member country of the European Patent Convention 1973, the Paris Convention and Patent Cooperation Treaty 1970.
If there is no declaration of priority, the priority date of an application for a patent is the filing date of the application.
No resident may file or cause to be filed outside Malaysia an application for a patent for an invention without the written authority of the Registrar of Patents unless:
  • an application for a patent for the invention has been filed in the Patent Registration Office not less than two months before the application outside Malaysia
  • either the Registrar of Patents has not issued any directions as to secrecy or has revoked all such directions.
None of the provisions described in the last paragraph are applicable to an application which has been filed outside Malaysia by a non-resident.
Industrial design
A design that is new and not contrary to public morality is eligible for protection.
The author of an industrial design is treated as the owner of the industrial design. However, where the industrial design is commissioned for money or money’s worth, the commissioner will be treated as the original owner subject to contrary agreement between the parties. The employer, subject to contrary agreement between the parties, is treated as the original owner of an industrial design created by the employee in the course of employment. Industrial design is transferable by assignment, testamentary disposition or by operation of law. The assignment, transmission or operation of law must be recorded in the Register of Industrial Designs to be effective against third parties.
The registration of an industrial design will subsist for five years and is extendable for two further consecutive terms of five years each.
Malaysia is a member country of the international conventions which revised the Paris Convention and TRIPS. Malaysia adopts the Locarno Agreement Establishing an International Classification for Industrial Design 1968 (amended in 1979) for the classification of designs. Priority will be accorded for earlier national, regional or international applications filed by the applicant or his or her predecessors in title in or for any state which is a party to any international treaty or convention to which Malaysia is a party. To claim the priority, the application in Malaysia must be filed within six months of the earlier applications. In other cases, the priority date will be the “filing date” of the application.

Franchising
Franchising is an established business strategy among retailers and other service providers in Malaysia to expand their businesses. It involves the franchisor giving the franchisee the rights and conduct of a prescribed business format or system coupled with the rights to use their trade mark, trade secret, and confidential information or intellectual property of the franchisor. The Franchise Act 1998 applies to the sale of any franchise in Malaysia.
A local franchisor who intends to sell a franchise to a person who is not a Malaysian citizen is required to obtain the approval from the Registrar of Franchise. A foreign person who intends to sell a franchise in Malaysia or to any Malaysian citizen is also required to obtain the Registrar’s approval. Further, a master franchisee is required to register with the Registrar.
In general, a franchisor is required to submit a copy of its franchise agreement and disclosure documents to a franchisee at least ten days before the franchisee signs the agreement with the franchisor. The franchisor is also required to submit annually a report to the Registrar in a prescribed form within 30 days from the anniversary date of the registration. If a franchisee is required to pay any franchise fee or royalty, the rate of franchise fee or royalty to a franchisor shall be at the rate as provided in the disclosure document.
A franchise agreement is required to be in writing and for a term of not less than five years. However, the franchise term may be terminated prior to the expiry of the minimum five-year term if the parties to the franchise agreement agree to terminate or where a court determines there are certain conditions in the franchise agreement which warrant early termination. At any time before the expiration of the franchise term, a franchisee is entitled to give written notice to the franchisor to extend the franchise term unless the franchisee has breached the terms of the agreement. A franchise agreement, if renewed, is required to be on conditions similar to or not less favorable than the conditions in the original agreement.
A franchisee is required to give a written guarantee to the franchisor that the franchisee and its employees will not disclose to any person any information contained in the operation manual for the franchise or obtained while undergoing training organized by the franchisor during the franchise term, and for a period of two years after the expiration or earlier termination of the franchise agreement. Further, a franchisee is required to give a written guarantee to a franchisor that the franchisee and its employees will not carry on any other business similar to the franchised business operated by the franchisee during the franchise term and for two years after the expiration or earlier termination of the franchise agreement.
A franchisor who requires a franchisee to make any payment for the purpose of the promotion of a franchise shall establish a promotion fund. Financial statements for the promotion fund, endorsed by a registered public accountant, must be submitted to the Registrar within 30 days after the conclusion of each financial year. A franchisor is required to have at least made an application to register his or her trade mark or service mark relevant to his franchise in accordance with the Trade Marks Act before applying for registration of the franchise.
Non-compliance with the Franchise Act is an offense punishable by imprisonment or fines, depending on the nature of the contravention. Non-compliance also renders the franchise agreement null and void.