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 |
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| Major international treaties signed |
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| 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 |
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| Filing and prosecution procedures | Stage 1: Filing
Stage 2: Formality Examination Stage 3: Substantive Examination Stage 4: Grant Stage 5: Renewal/ Annuity |
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| 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 |
(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 |
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| Major international treaties signed |
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| Cost of obtaining a trademark | Please contact us at malaysia@mirandah.com |
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| 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 |
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| 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 |
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| 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 |
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| Minimum period of use to avoid non-use cancellation action | 3 years (continuous) | |
| Useful links |
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| Infringement offence |
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| Specialised courts for IP | Available | |
| Outline of the enforcement steps | Notice of Cease and Desist
Infringement |
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| 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 |
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| Criminal Sanctions | Trade Description Order Monetary fines or imprisonment or bothBorder Measure Prohibition of importation; seizure; detention; forfeiture of goods bearing counterfeit trademark |
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| 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
Malaysia's IP landscape?
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