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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 6 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
Legal Basis Trade Marks Act 2019 effective 27 December 2019
Trade Marks Regulations 2019 effective 27 December 2019
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)
  • Madrid Protocol effective 27 December 2019
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 letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, sequence of motion 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 (11th Edition Nice Classification)
Multiple class filing Available
Filing of series marks Available
Common objections Descriptiveness (Absolute grounds for refusal of registration)
Non-distinctiveness (Absolute grounds for refusal of registration)
Prior conflicting rights (Relative grounds for refusal of registration)
Extension of office action deadlines Available
Opposition term 2 months (extendible)
Term of trademark protection 10 years (renewable)
Grace period for 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 (Declaration / an injunction / Damages)
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
Other relief for infringement Revocation 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
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