Malaysia’s intellectual property laws include:
- Trade Marks Act 1976 and the Trade
Marks Regulations 1997
Act 1983 and the Patents Regulations 1986
Designs Act 1996 and the Industrial Design Regulations 1999
Property Corporation of Malaysia Act 2002
Designs and Integrated Circuit Act 2000
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
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
- literary works
- musical works
- artistic works
- sound recordings
- derivative works
The duration of copyright in Malaysia is as follows:
in any literary, musical or artistic works subsist during the life of the
author and 50 years after the author’s death
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
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
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.
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
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:
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
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:
name of an individual, company or firm represented in a special or particular
signature of the applicant for registration or of some predecessor in his business
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.
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
Priority may be claimed from:
- a domestic application for a
- 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:
application for a patent for the invention has been filed in the Patent
Registration Office not less than two months before the application outside
- 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
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
The registration of an industrial design will subsist for
five years and is extendable for two further consecutive terms of five years
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 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
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
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