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mirandah asia’s Malaysia office is headed by our CEO and founder, Patrick Mirandah, who has gained an esteemed reputation as one of the country’s most trusted and long-standing IP specialists since establishing in 1986.

Overview

Since signing the Paris Convention on the Protection of Industrial Property in 1989, Malaysia has consistently demonstrated its commitment to making intellectual property a priority in its national agenda, with many affirmative actions by the Malaysian government to improve the IP landscape in the country.

In 2006, it became party to the Patent Co-operation Treaty (PCT), meaning that patent applications in Malaysia can be filed as part of one application in conjunction with other PCT states.

In 2007, it boosted its trademark services by becoming signatory to both the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks and the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks.

Growth of Malaysia’s IP landscape

On 27 April 2007, the Malaysian Government launched the National Intellectual Property Policy (NIPP), a blueprint for IP policies and directions, with the aim of fostering a healthy and vibrant IP environment and harnessing IP as a new engine of growth. This was followed by the establishment of the Intellectual Property Courts (IP Courts) in July 2007, making Malaysia one of the first countries in the region to have specialised courts dealing with IP cases.

Hot on the heels of that, the country also set up a Special Task Force on Counterfeiting and Piracy and implemented the “Tulen Patrol” campaign to carry out random checks at business offices for the use of illegal software.

Furthermore, as a result of the ASEAN Economic Community’s Harmonisation Plan, Malaysia has agreed to accede to the Madrid Agreement Concerning the International Registration of Marks (also known as the “Madrid Protocol”). This projected accession is still awaiting effective date.

 

Legal Basis
  • Patents Act 1983, effective 1 October 1986
  • Patents (Amendment) Act 1993, effective 1 August 1995
  • Patents (Amendment) Act 2000, effective 1 August 2001
  • Patents (Amendment) Act 2002, effective 3 March 2003
  • Patents (Amendment) Act 2003, effective 14 August 2003
  • Patents (Amendment) Act 2006, effective 16 August 2006
  • Patents Regulations 1986, effective 1 October 1986
  • Patents (Amendment) Regulations 1993, effective 1 August 1995
Major international treaties signed
  • Patent Cooperation Treaty (PCT), effective 16 August 2006
  • Paris Convention, effective 1 January 1989
  • World Trade Organization (WTO), effective 1 January 1995
  • Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)
Costs of obtaining a patent Please contact us at malaysia@mirandah.com
Average time to obtain a patent 12 to 30 months from PCT national phase entry, 42 to 48 months from priority date for Paris Convention applications
Major prosecution events
National Phase Entry : 30 months
Request for Examination : 18 months from the date of filing for Paris Convention applications

48 months from the International filing date for PCT National Phase entry

Renewals of patents : Every year upon grant of patent
Filing and prosecution procedures Stage 1: Filing

Stage 2: Formality Examination

Stage 3: Substantive Examination

Stage 4: Grant

Stage 5: Renewal/ Annuity

Extension of office action deadlines May be filed only once for a maximum of 9 months for examination events
Necessary document for filing Power of Attorney, Statement Justifying Applicant’s Rights
Pharmaceutical Data Exclusivity Laws Available – Malaysia has implemented DE since 2011 for undisclosed, unpublished and non-public domain pharmaceutical test data. The term is five years for a new chemical entity and three years for a second indication. DE is awarded to the originator; however, a generic company may rely on bio-equivalence (BE) to get marketing authorization. Marketing authorization is managed by the National Pharmaceutical Regulatory Agency.
Search and Examination The Patent Office does conduct its own search and examination, but favours search and examination reports issued in prescribed countries such as US, UK, Australia, Japan and South Korea as well as the European Patent Office.
Opposition Term Not available
Term of Patent Protection 20 years
Patent Term Extension Not available
Restoration of Lapsed Patent Within 24 months from date of lapse
Parallel Imports Available
Other Forms of Patents Utility innovation (UI): UI does not require inventiveness. A maximum of one claim is permitted.
Useful Links MYIPO
Infringement offence Available
Specialised courts for IP Available
Outline of the enforcement steps Notice of Cease and Desist Infringement lawsuit
Relief against groundless threats Not available
Declaration of non-infringement Available
Preliminary injunctions Available
Time frame for various legal actions Revocation – 1 to 2 years

Infringement proceeding – 2 to 3 years

Alternative dispute resolution Mediation, Arbitration
Availability of damages and other relief for infringement Injunction, Loss of revenue, Account of profits
Civil remedies Available
Criminal Sanctions Not available

 Year

Application

Granted

Domestic

Foreign

Total

Domestic

Foreign

  Total

2003

376

4686

5062

31

1547

1578

2004

522

1920

5442

24

2323

2347

2005

522

5764

6286

37

2471

2508

2006

531

4269

4800

187

6562

6749

2007

670

1702

2372

338

6645

6983

2008

864

4539

5403

198

2044

2242

2009

1234

4503

5737

270

3198

3468

2010

1275

5189

6464

204

1973

2177

2011

1136

5423

6559

335

2057

2392

2012

1160

5867

7027

308

2193

2501

2013

1269

6081

7350

305

2386

2691

2014

1439

6321

7760

381

2381

2762

2015

1375

6532

7907

360

2548

2908

Sep 2016

880

4635

5515

213

2105

2336

(Source: Intellectual Property Corporation of Malaysia (MyIPO))

 

Legal Basis Trade Marks Act 1976 effective 1 September 1983
Trade Marks (Amendment) Act 1994, 2000 and 2002, the latter effective 3 March 2003
Trade Marks Regulations 1997 effective 1 December 1997
Major international treaties signed
  • Paris Convention effective 1 January 1989
  • Nice Agreement effective 28 September 2007
  • Vienna Agreement effective 28 September 2007
  • Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)
Cost of obtaining a trademark Please contact us at malaysia@mirandah.com
Average time to obtain a trademark 12 months
Official language for trademark prosecution Bahasa Malaysia or English
Registrable marks Any distinctive device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof
Filing and prosecution procedures Stage 1: Filing
Stage 2: Examination
Stage 3: Advertisement
Stage 4: Opposition (if any)
Stage 5: Registration
Stage 6: Renewal
Number of classes 45 (8th Edition Nice Classification)
Multiple class filing Not Available
Filing of series marks Available
Necessary document for filing Statutory Declaration of Bona Fide Ownership of Mark
Common objections Descriptiveness
Non-distinctiveness
Prior conflicting rights
Extension of office action deadlines Available
Opposition term 2 months (extendible)
Term of trademark protection 10 years (renewable)
Restoration of lapsed trademark Within 12 months from the expiry of the last registration
Parallel Imports
Available
Minimum period of use to avoid non-use cancellation action 3 years (continuous)
Useful links
Trademark Agents and Attorneys in Malaysia
www.myipo.gov.my
Infringement offence
Available
Specialised courts for IP Available
Outline of the enforcement steps Notice of Cease and Desist

Infringement

Passing-off
Application for a Trade Description Order under the Trade Descriptions Act 2011
Border Measures

Relief against groundless threats Available (Summary Judgment)
Declaration of non-infringement Available
Preliminary injunctions Available
Time frame for various legal actions 6 to 12 months
Alternative dispute resolution Limited to trade mark matters involving domain name dispute
Availability of damages and other relief for infringement Expungement Action
Civil remedies Injunction
Damages
Criminal Sanctions Trade Description Order
Monetary fines or imprisonment or bothBorder Measure
Prohibition of importation; seizure; detention; forfeiture of goods bearing counterfeit trademark
Other It is a criminal offence to represent a trademark as registered when in fact it is not. Sanctions may include monetary fines or imprisonment or both
 Year Applications Registrations
Domestic Foreign Total Domestic Foreign Total
2003 8327 9439 17766 3014 9108 12122
2004 10406 10337 20743 3243 8473 11716
2005 10479 11668 22147 3683 7771 11454
2006 11209 12840 24049 5651 10108 15759
2007 12289 13605 25894 8108 17382 25490
2008 12562 13472 26034 9049 18798 27847
2009 12810 11260 24070 5438 9534 14972
2010 13099 13271 26370 5642 8652 14294
2011 13001 15832 28833 10201 13618 23819
2012 14044 17832 31876 9765 16311 26076
2013 14705 17520 32225 9777 17202 26979
2014 15400 19171 34571 10467 16961 27428
2015 15940 19983 35923 10529 18271 28800
Sep 2016 13679 14769 28448 9227 14300 23527

Source: WIPO

 

Want to find out more about
Malaysia's IP landscape?
Drop us a line or visit
our office.

mirandah asia (malaysia) sdn bhd
Suite 3B-19-3 Plaza Sentral Jalan Stesen Sentral 5 50470 Kuala Lumpur, Malaysia

Tel: +(603) 2278 86 86
Fax: +(603) 2274 66 77

Email: malaysia@mirandah.com